No revocation carve-out and related actions – 2nd UPC decision on the merits

Following the Düsseldorf Local Division (LD), the Paris LD issued the second UPC decision on the merits on 4 July 2024 (LD, Paris, Dexcom, Inc. v. Abbott et all., 4 July 2024, UPC_CFI_230/2023). Paris LD confirmed that a defendant’s counterclaim for revocation of the patent is not limited by any geographical restrictions on the infringement claim put forward by the claimant. Consequently, if a patent is revoked in a counterclaim, that revocation extends to all UPC contracting member states designated by the patent even if the infringement claim brought by the claimant excludes acts of infringement in certain UPC states. 

Key takeaways:

• Infringement carve-outs do not territorially restrict revocation counterclaims: the counterclaim for revocation is not limited to the territorial scope of the original infringement claim, although the latter was filed in a way that excluded Germany amongst the designated UPC contracting member states (“carve-out”) aiming at avoiding parallel jurisdiction with the German courts, which were already hearing an infringement and nullity action for the patent in suit. 
• Priority given to UPC over national courts justified by efficiency and speediness: an action for revocation of the German part of the European patent at stake had been filed by one of the defendants of the UPC infringement action before a German court prior to the filing of the UPC revocation counterclaim. There was thus not identity of either parties or subject matter with the UPC action. In such case of related actions under Article 30 (2) of Brussels Ibis, the UPC can decide discretionarily not to decline its jurisdiction in favour of the national court. Paris LD justified maintaining its jurisdiction in view of the principles of efficiency and expeditious decisions (noting the decision of the German patent court was not expected before January 2025).
• The patent was found invalid, both as granted and as amended by the auxiliary requests and so was revoked in its entirety. On this basis, Paris LD simply dismissed the infringement action withing giving any opinion on whether the patent would have been infringed.
• As per the Dusseldorf decision of 3 July 2024, inventive step was assessed by using the problem-solution approach without explicit reference.
• The patent as granted was revoked for lack of inventive step, despite the fact it had survived an opposition filed by one of the defendants.
• Costs of the claim are to be borne by Dexcom. Abbott’s request for an interim award of costs is dismissed for not being sufficiently justified.