Key takeaways
Headnote 1: Order pursuant to R. 36 RoP does not authorize to raise new grounds; UPC procedure is front-loaded system.
The order pursuant to Rule 36 RoP issued by the judge-rapporteur relates to adding some arguments to the debate related to some specific terms regarding claim interpretation, but it did not authorise the defendant to raise a new ground for revocation. The UPC procedure is a front-loaded system and the Court finds no legitimate reason for the defendant, which had already stated its own claim interpretation in its Statement of Defence and counterclaim, to raise a new ground for revocation at a later stage of the proceedings concerning the validity of the patent as granted. The additional ground concerning the patent as granted raised in the Rejoinder to the reply to the Statement of Defence is inadmissible pursuant to Rule 9.2 RoP.
Headnote 2: “Whole-content approach” adopted for claim interpretation.
As regards the claim interpretation, the Court adopted a “whole-content approach”. In the present case, a question to be addressed is whether the skilled person considering a claim would be confronted with new technical information based on what was derivable, directly and unambiguously, from the whole contents of the description, claims and figures of the earlier application.
The standard for the interpretation of patents set by the UPC Court of Appeal in the orders UPC_CoA_335/2023 and UPC_CoA_1/2024 is to be adopted:
1) The patent claim is not only the starting point, but the decisive basis for determining the protective scope of the European patent.
2) The interpretation of a patent claim does not depend solely on the strict, literal meaning of the wording used. Rather, the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim.
3) However, this does not mean that the patent claim serves only as a guideline and that its subject-matter may extend to what, from a consideration of the description and drawings, the patent proprietor has contemplated.
4) The patent claim is to be interpreted from the point of view of a person skilled in the art.
5) In applying these principles, the aim is to combine adequate protection for the patent proprietor with sufficient legal certainty for third parties.
It follows from this standard:
The patent claim is the decisive basis for determining the protective scope and the validity of the European patent.
The patent claim cannot serve only as a guideline and its subject-matter may not extend to what, after examination of the description and drawings, appears to be the subject-matter for which the patent proprietor seeks protection.
The Proprietor’s interpretation is consistent with the description. However, adopting it for the purposes of claim interpretation would lead to an incompatibility with the wording of several claim features, namely features 1.1.3, 1.4 and 1.6, thus going beyond using the description and the drawings as explanatory aids for the interpretation of the patent claim.
Such an interpretation deviating from the wording of the claim would not combine adequate protection for the patent proprietor with sufficient legal certainty for third parties, to the detriment of third parties in the present case.
Division
Paris Local Division
UPC number
UPC_CFI_395/2023
Type of proceedings
Decision on the merits; infringement action with counterclaim for revocation
Parties
CLAIMANT: DexCom, Inc., 6340 Sequence Drive, 92121 San Diego, CA – US
DEFENDANTS: Abbott Logistics B.V.;
Abbott Diagnostics GmbH;
Abbott France;
Abbott Oy;
Abbott Diabetes Care Inc.;
Newyu,Inc.;
Abbott Laboratories;
Abbott Laboratories A/S;
Abbott Scandinavia Aktiebolag;
Abbott; Abbott GmbH;
Abbott Gesellschaft m.b.H.;
Abbott S.r.l.;
Abbott B.V.
Patent(s)
EP 3 831 282
Composition of Panel
Presiding judge and Judge-rapporteur: Camille Lignières
Legally qualified judge: Rute Lopes
Legally qualified judge: Carine Gillet
Technically qualified judge: Alain Dumont
Body of legislation / Rules
Rule 9.2, 36 RoP, Art. 56, 138(1)(c) EPC
