Background

Abbott Diabetes Care Inc has been a market leader in the continuous glucose-monitoring devices since 2007, having a EU market share of approximately 80%. SiBio Technology Ltd also manufactures continuous glucose-monitoring devices, selling their products in China since 2021. Toward the end of 2023 SiBio entered the EU market with its “GS1” device via an importer: Umedwings Netherlands B.V.

First instance decision on jurisdictional competence of the UPC

Abbott pursued a number of remedial actions against SiBio and Umedwings by way of enforcing their rights under EP2713879 (UPC_CFI_130/2024), including a preliminary injunction for direct infringement of the patent. SiBio’s defence was predicated on a cease-and-desist declaration, which included undertakings to withdraw its device from Germany, France and the Netherlands. They contested that the application was devoid of purpose and there was no need to adjudicate on it.

In their decision, the court noted that Abbott’s application stated that the patent was “valid and in force in the Contracting Member States of Germany, France, The Netherlands and also Ireland”, while it was “also in force in the UK”. The court took the view that the application statement, when read in combination with the order sought, implied that Abbott intended the order to cover Ireland, which was deemed to be a UPC contracting member state by virtue of it being a signatory state to the UPC Agreement, even though Ireland has not yet ratified the agreement.

SiBio did not challenge the competence of the court with respect to Ireland. Consequently, the Local Division held that the conditions for permitting a preliminary injunction in Germany, France, The Netherlands and, notably, Ireland had been met. In other words, the Local Division held that the jurisdiction of the UPC extends to Ireland in spite of the fact that Ireland has not yet ratified the UPC Agreement.

Interestingly, the court also drew a distinction with the UK, which was deemed to no longer be a contracting member state in spite of the fact that the UK also signed (and, in fact, ratified) the UPC Agreement, though they subsequently sought to withdraw their ratification. Therefore, the application was not considered to cover the UK.

Court of Appeal clarifies competence of the UPC

SiBio lodged an appeal against the Local Division’s order (UPC_CoA_388/2024), requesting (in part) that the appeal had suspensive effect to the extent that the provisional measures were granted for Ireland.

The UPC Court of Appeal agreed with SiBio’s argument, stating that the Local Division’s decision was “manifestly erroneous”. The court cited issues with the wording of Abbott’s preliminary injunction application, which implied that Ireland was a “contracting member state” with respect to the UPC Agreement. In their decision, the court affirmed that only countries that have signed and ratified the UPC Agreement are contracting member states.

Moreover, the court found that SiBio’s failure to contest the Court of First Instance’s competence, with respect to Ireland, does not alter the fact that Ireland is not a contracting member state: SiBio did not have to expect the court’s erroneous interpretation of Abbott’s claim. The court granted suspensive effect to the extent that the provisional measures were granted for Ireland. However, they rejected SiBio’s request for suspensive effect of the provisional measures in The Netherlands, Germany and France, which are UPC Agreement contracting member states.

Conclusion

The willingness of the Hague Local Division to take a decision that was of a politically sensitive nature certainly raised some eyebrows. Indeed, Ireland had intended to put the question of ratifying the UPC Agreement to a referendum, although this plan has been shelved with no indication of when the delayed referendum may take place.

Had the first instance decision not been challenged it may have been assumed that remedies could be awarded in respect of acts taken in territories that are signatories to the UPC Agreement, but who have not yet ratified the agreement. However, it is encouraging the Court of Appeal has quickly and decisively clarified that the UPC’s jurisdiction does not extend to states that have not ratified the UPC Agreement. Reassuringly, they also confirm that there is no obligation on defendants to actively challenge a court’s erroneous interpretation of a claimant’s application. Nevertheless, interpretation of a claimant’s application will always be a point of contention. Therefore, we would suggest challenging all aspects of the UPC proceedings if they are not in line with overall litigation strategy.

Case details at a glance

Decision level: Hague Local Division
Case: UPC_CFI_130/2024
Order: ORD_30434/2024
Parties: Abbott Diabetes Care Inc. v Sibio Technology Limited & Umedwings Netherlands B.V.
Date: 19 June 2024
Decision: dycip.com/abbott-sibio-jun24

Decision level: Court of Appeal
Case: UPC_CoA_388/2024
Order: ORD_47551/2024
Parties: Sibio Technology Limited & Umedwings Netherlands B.V. v Abbott Diabetes Care Inc
Date: 19 August 2024
Decision: dycip.com/sibio-abbott-aug24