UPC departs from EPO selection principle in novelty analysis: Dexcom v Abbott
According to established European Patent Office (EPO) practice, a selection of one or more elements from a single list of specifically disclosed elements does not confer novelty. However, in Dexcom v Abbott the UPC Paris Local Division concluded that a single selection was sufficient to render a claim novel.
Background
The decision in this case stems from an infringement action filed by Dexcom before the UPC Paris Local Division, in which Abbott filed a counterclaim for revocation. The action is part of a broader legal battle between the two companies, in which Dexcom has been aiming to enforce its granted European patent EP 3435866, alleging infringement by Abbott’s glucose monitoring device “Freestyle Libre 2”.
Abbott had previously requested revocation of Dexcom’s patent in opposition proceedings. However, the Opposition Division found claim 1 of the granted patent to be novel and inventive and maintained the patent as granted. No appeal was lodged against the decision.
Novelty
The claim at issue related to an analyte monitoring system comprising a sensor electronics unit configured to: (a) transmit a first portion of analyte measurement data using a first communication protocol that is Bluetooth or Bluetooth Low Energy (BLE); and (b) receive a data request command from a display device and transmit a second portion of analyte measurement data using a second communication protocol that is near field communication (NFC) or radio-frequency identification (RFID).
The Opposition Division considered granted claim 1 novel over D1 on the basis that it does not disclose:
- the single monitoring system using two different types of communication protocols;
- Bluetooth or BLE being the first communication protocol; and
- NFC or RFID being the second communication protocol.
In contrast, the Paris Local Division found that D1 “expressly envisages” the use of two protocols and the skilled person would not be deterred from implementing such a system. The Paris Local Division also found that paragraph [0100] of D1 “expressly listed” Bluetooth and BLE as alternatives for a first communication protocol.
Whilst paragraph [0101] of D1 lists NFC, Bluetooth, BLE, and Wi-Fi as protocols for transmitting the second portion, under EPO practice the single selection of NFC would not normally be sufficient to render the claim novel. However, the Paris Local Division concluded that D1 does not “expressly disclose” the choice of NFC as the protocol for the transmission of the second portion and that the claim was therefore novel.
Inventive step
In assessing inventive step, the Paris Local Division largely followed the EPO’s problem-solution approach. Similar to the identification of the closest prior art in the problem-solution approach, the Paris Local Division explained why other prior art documents were less relevant than D1 in considering novelty.
The Paris Local Division set out the difference between D1 and claim 1 of the granted patent and formulated the technical problem, before finding that no surprising effect was associated with choosing NFC “beyond the well-known advantages of low power consumption and security due to the low range”.
Having established lack of a surprising effect, the Paris Local Division considered the choice of NFC for the second communication protocol obvious, particularly in light of D1 stating that the data request command already requires the display device to be in close proximity to the sensor electronics unit.
This conclusion appears to follow established EPO case law that a novel feature in the absence of a as yet unknown effect in comparison to the prior art is to be regarded as an arbitrary choice from a host of possible solutions and cannot be considered inventive.
Summary
Whilst the Paris Local Division’s decision generally appears to follow established EPO practice, it may have diverged in concluding that a selection of an element from a single list of specifically disclosed elements was sufficient to confer novelty.
This conclusion may not have been decisive here, since the selection was considered an arbitrary choice from a host of possible solutions and therefore obvious. However, such a divergence could be important in other cases, for example in which the prior art under consideration is not a suitable starting point for inventive step. We will watch with interest to see whether the UPC follows the same approach in upcoming decisions.
Case details at a glance
Decision level: Paris Local Division
Case: UPC_CFI_230/2023
Order/decision: ORD_37297/2024
Parties: DexCom Inc v Abbott Scandinavia Aktiebolag, Abbott NV/SA, Abbott Srl, Abbott Diabetes Care Inc, Abbott Diagnostics GmbH, Abbott France, Abbott BV, Abbott Logistics BV, Abbott GmbH, Abbott Laboratories
Date: 04 July 2024
Decision: dycip.com/dexcom-abbott-jul24
