UPC_CFI_395/2023 – Dexcom v Abbott

Expert Commentary

Request after the oral argument Background The oral hearing in this case took place on 30 October 2024 and the Court announced to render its decision on 12 December 2024. On 12 November 2024, Dexcom asked the Court to communicate with the parties about its wishes to comment on a decision of the national German Court (Munich). In that decision, the Court granted an injunction on the basis of the parent patent of the patent subject of the proceedings in Paris and found that it is not likely that that patent is invalid. Decision Decision of the Presiding Judge, which after the closure of the interim procedure is in charge of case management: 1. The application is admissible. The Court refers to R. 334 RoP and R. 336 RoP and the Book of Tilmann and Plassmann. Since the case is still pending, the presiding judge remains in charge of the case management as foreseen in Art. 43 UPCA and Chapter 8 of the Rules of Procedure on case management. 2. The application is not justified, as the decision does not concern the patent at issue but another patent which discloses another invention with different features and moreover the Munich Court does not examine the validity. Comments 1. I disagree with the Court that the application is admissible. The reasons given by the Court cannot support this decision. 2. It is correct that the Presiding Judge after the closure of the interim procedure is in charge of case management. That is indeed what Tilmann and Plassmann write, but there is no suggestion in their book and more importantly in Art. 43 UPCA or Chapter 8 of the Rules of Procedure (all cited by the Court to support its decision) that a party after the oral hearing (which is the final step in the proceedings) can file a further request that reopens the debate. On the contrary, R. 111 RoP in my opinion makes clear that the management role of the Presiding Judge ends with ensuring that, at the end of the oral hearing, the case is ready for a decision. 3. If such requests are allowed, then of course parties are going to use this to keep bringing arguments after the debate is closed at the end of the oral hearing. 4. This case provides a clear example, as Dexcom already conveys the arguments it wants to make in its request. 5. The proper and correct way would have been to state during the oral argument that a decision of the Regional Court of Munich was expected. Both parties could have made arguments about the importance of that decision during the oral argument. If the Court had thought that it was important (from the decision it can be seen that that was not the case), the Court could have given appropriate directions. 6. Hopefully, the Court of Appeal will in the future clearly rule that after the closure of the oral hearing a party cannot communicate with the Court without the consent of (the representative of) the other party (unless the Court during the oral hearing would expressly ask for such communication). 7. A representative who after such a clear ruling nevertheless communicates with the Court (as happened in this case) would violate Art. 2.2 and 2.3 of the Code of Conduct for representatives.

Full Decision Text

1 Paris Local Division UPC_CFI_395/2023 Procedural Order of the Court of First Instance of the Unified Patent Court delivered on 25/11/2024 APPLICANT 1) DexCom, Inc. 6340 Sequence Drive 92121 - San Diego, CA - US Represented by Anne-Charlotte Le Bihan RESPONDENTS 1) Abbott Logistics B.V. Postbus 365 8000AJ Zwolle – NL Represented by Christian Dekoninck 2) 3) Abbott Diagnostics GmbH Max-Planck-Ring 2 65205 Wiesbaden – DE Abbott France 40/48 Rue d’Arceuil 94593 Rungis CP 10457 France Represented by Christian Dekoninck Represented by François Pochart 4) Abbott Oy Karvaamokuja 2 A 00380 Helsinki - FI Represented by Christian Dekoninck 5) Abbott Diabetes Care Inc. 1360 South Loop Road 94502 Alameda, CA - US Represented by Christian Dekoninck 2 6) Newyu,Inc. 100 Abbott Park Road, D367 AP6D Sales Tax 60064 Abbott Park, Illinois - US Represented by Christian Dekoninck 7) Abbott Laboratories 100 Abbott Park Road 60064 Abbott Park, IL - US Represented by Christian Dekoninck 8) Abbott Laboratories A/S Emdrupvej 28C 2100 Copenhagen - DK Represented by Christian Dekoninck 9) Abbott Scandinavia Aktiebolag Hemvärnsgatan 9 171 54 Solna - SE Represented by Christian Dekoninck 10) Abbott Avenue Einstein 14 1300 Wavre - BE Represented by Christian Dekoninck 11) Abbott GmbH Max-Planck-Ring 2 65205 Wiesbaden - DE Represented Christian Dekoninck 12) Abbott Gesellschaft m.b.H. Perfektastrasse 84A 1230 Wien - AT Represented by Christian Dekoninck 13) Abbott S.r.l. Viale Giorgio Ribotta 9 00144 Rome - IT Represented by Christian Dekoninck 14) Abbott B.V. Wegalaan 9 2132JD Hoofddorp - NL Represented by Christian Dekoninck 3 PATENT AT ISSUE Patent no. Proprietor EP3831282 DexCom, Inc. DECIDING JUDGE Presiding judge Camille Lignières LANGUAGE OF PROCEEDINGS: English ORDER Facts and procedure The oral hearing in the infringement action based on DEXCOM's patent EP'282 was held on Octo- ber 30, 2024, the debates were closed on that date and the final decision was announced to be issued on December 11, 2024. On 12 November 2024, DEXCOM submitted an application pursuant to R. 334.e) and 336 RoP for the Court to communicate with the parties to instruct them about its wishes to comment on the decision rendered by the Regional Court of Munich on November 6, 2024 relating to the validity and infringement of the German part of EP 2,939,158 by Defendants 1 and 11. In support of its application, DEXCOM argues that: -the Munich Regional Court rendered, on 6 November 2024, a decision whereby it ruled that claims 1 and 12 of the German part of European patent EP 2 939 158 (hereinafter “EP’158”) are indirectly infringed by Defendants 1 and 11 and that the proceedings should not be stayed because the pa- tent is likely to be valid; - EP’158 is the parent patent of EP’282 and its independent method claim 1 closely resembles claim 1 of EP’282. - the subject matter of claim 1 of EP’158 is very similar to the subject matter of claim 1 of Auxiliary Request 2 of EP’282. DEXCOM concludes that the Munich ruling is of relevance to the present proceedings because Defendants had adopted the same misconstruction strategy, which was entirely dismissed by the Munich Regional Court. 4 In its comments in reply, ABBOTT requests the Court to: - 1) declare DEXCOM’s Application inadmissible arguing that DEXCOM’s application refers to Chapter 8 of the RoP regarding case management and has no legal basis because the rules of Chapter 8 relate to the case management up to the stage after the closure of the interim conference but before the oral hearing. - 2) receive ABBOTT’s comments on DEXCOM’s Application and on the decision rendered by the Munich Regional Court on November 26, 2024, arguing that: -the Regional Civil Courts does not address the validity of the patent in suit; -EP’282 is related to another invention with specific features (invitation), such as the invitation scheme which is not comprised in Claim 1 of EP’158; -it follows that the subject matter of claim 1 as granted of EP’282 is different from the one of EP 158 and shows that the German decision regarding the EP’158 case has no relevance regarding the ongoing EP’282 case. Legal framework Rule 334 – Case management powers: Except where the Agreement, the Statute or these Rules provide otherwise, the judge-rapporteur, the presiding judge or the panel may: (…) (c) communicate with the parties to instruct them about wishes or requirements of the Court; Rule 336 – Exercise of case management powers: The Court may exercise its case management powers on the application by a party or of its own motion, unless otherwise provided. Grounds In the UPC Rules of Procedure (RoP), case management powers are not limited to the stage of the proceedings that ends with the closure of the interim procedure, until when the Judge-Rapporteur is in charge of it. On the contrary, the Court, and in particular the Presiding Judge, could exercise his/her case man- agement powers after the closure of the interim procedure. (ref. Book “Unified Patent Protection in Europe”, W. Tillmann and C. Plassmann, 1st edition, Oxford University Press, pages 2332 to 2334) Even after the oral hearing since the case is pending the presiding judge remains in charge of the case management as foreseen in Art. 43 UPCA and Chapter 8 of the RoP on Case management. Therefore, the DEXCOM’s application based on R 334 and R 336 RoP is admissible. However, the Court considers that this request made at a very late stage of the proceedings is not justified, since the decision in question does not concern the patent at issue in the present case, but its parent patent, which discloses another invention with similar but also different features. Moreover, the Regional Court of Munich, seized by an infringement action, did not examine the 5 validity issue on the merits but in a context of a request for a stay with regard to the pending nullity proceedings before the Federal Patent Court. It follows that there is no justification in the present case for an order authorizing the reopening of the debate after the Oral hearing. Therefore, the Court orders that: The DEXCOM application is admissible but not well grounded and is dismissed. This order may be reviewed pursuant to R. 333 RoP. Issued in Paris, on 25 November 2024. Camille Lignières, Presiding judge. ORDER DETAILS Order no. ORD_62696/2024 in ACTION NUMBER: ACT_583778/2023 UPC number: UPC_CFI_395/2023 Action type: Infringement Action Related proceeding no. Application No.: 60804/2024 Application Type: Application pursuant to R. 334.e) and 336 RoP

Key Holdings

• An application to comment on a national court decision after the oral hearing was deemed admissible but ultimately not justified by the Presiding Judge.
• The Presiding Judge retains case management authority after the interim procedure closure, as per Art. 43 UPCA and Chapter 8 RoP.
• The application was rejected because the national decision concerned a different patent with different features and did not examine validity.
• The commentator argues that such requests after the oral hearing closure should be inadmissible to prevent reopening debate and ensure procedural finality.

Tags

• Admissibility
• Case Management
• National Proceedings
• Oral Hearing
• Procedural Issues

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