Nordic-Baltic - regional division
UPC_CFI_430/2023 Preliminary Order of the Court of First Instance of the Unified Patent Court
delivered on 07/10 /2024
CLAIMANT
- Abbott Diabetes Care Inc.
(Claimant) - 1360 South Loop Road - 94502 -
Alameda - US
Represented by Wim
Maas
DEFENDANTS
- Dexcom Inc.
(Defendant) - 6340 Sequence Drive - 92121- 4356 - San Diego - US
Represented by Tjibbe Douma
- Dexcom International Limited
(Defendant) - Lampousas Street - 1095 - Nicosia - CY
PATENT AT ISSUE
Patent no.
Proprietor/s
EP3977921
Abbott Diabetes Care Inc.
DECIDING JUDGE Kai Härmand
COMPOSITION OF PANEL - FULL PANEL
Presiding judge Judge-rapporteur Legally qualified judge
Stefan Johansson Kai Härmand Pierluigi Perrotti
LANGUAGE OF PROCEEDINGS: English
SUBJECT-MATTER OF THE PROCEEDINGS
Infringement action and counterclaim for revocation
SUMMARY OF FACTS
Abbot Diabetes Care Inc (Claimant) filed infringement acƟon against Dexcom Inc (Defendant I) and Dexcom InternaƟonal Limited (Defendant II) regarding the EP patent 3977921 B1 (EP 921) on 20.11.2023. Defendants filed counterclaim for revocaƟon on 28.03.2024.
The parƟes have submiƩed various applicaƟons in relaƟon to the main proceeding. The Claimant has submiƩed an ApplicaƟon for an Order to communicate informaƟon (35051/2024), an ApplicaƟon for leave to change claim (35044/2024) and a Request that Dexcom's grounds for revocaƟon based on one of the submiƩed documents are dismissed (49195/2024).
The Defendants have in the Statement of Defence requested security for legal costs.
Due to the requested change of the Statement of Claim, Dexcom Inc and Dexcom InternaƟonal Limited ('The Defendants') have been granted leave not to file their Rejoinder to the Reply to the Statement of Defence unƟl it is determined which Statement of Claim will be in force. Similarly, the Claimant has been authorized to refrain from filing any further submissions in the form of a Rejoinder to the Reply to the Defence to the Counterclaim and a Reply to the Defence to the ApplicaƟon to Amend the Patent.
The Court held interim conference on 30.09.2024 without closing the wriƩen procedure to discuss:
- -AbboƩ's ApplicaƟon for an Order to communicate informaƟon (35051/2024);
- -AbboƩ's ApplicaƟon for leave to change claim (35044/2024);
- -AbboƩ's request that Dexcom's grounds for revocaƟon based on the Heller document are dismissed (49195/2024);
- -Pending EPO opposiƟon proceedings;
- -Deadlines for further wriƩen procedure;
- -PracƟcal issues relaƟng to the oral hearing, e.g. esƟmated Ɵme, potenƟal witnesses, etc.
GROUNDS FOR ORDER
The order deals with request submiƩed to the Court during the wriƩen procedure. The order also gives procedural deadlines for the further wriƩen procedure and to prepare the oral hearing according to the Rule 105 .5 RoP.
The Court will decide the value of the case according to the Rule 104 (i) and (j), also the applicaƟon of the Art 33(3) UPCA in a separate order.
AllocaƟon of a technically qualified judge
The Court discussed the technical field with the parƟes at the interim conference and asked the President of the Court of First Instance to allocate a technical judge.
ApplicaƟon for leave to change the prayer
The Claimant applies for leave to change its prayer for relief and argues, that the amendments made to the prayer for relief consƟtute a correcƟon to clarify what has already been asserted by the Claimant and do not qualify as a change of its claims (App_35044/2024).
The Defendants requests to dismiss the applicaƟon and/or not grant the requests
According to the Rule 263.1 RoP a party may apply tp the Court for leave of change its claim or to amend its case. According to the Rule 263.2 (a) and (b) RoP the leva shall not be granted if the party seeking the amendments fails to explain why the amendments could not have been made with reasonable diligence at an earlier stage. The amendments should not unreasonably hinder the other party in the conduct of its acƟon.
The Court dismisses the request. First of all, the reasoning of the request should have been included in the applicaƟon, not in the annex. In the adversarial, front-loaded procedure, the Court is not obliged to look for party posiƟons and circumstances in the documents accompanying the applicaƟon, but the rezoning must be included in the applicaƟon.
For the sake of clarity, and as the applicaƟon was explained during the interim conference, the Court takes its posiƟon also on the merits of the applicaƟon. The Court is in the posiƟon that the changes asked by abbot, are not just mere correcƟons. The Claimant wants to subsƟtute in claim 1.1. a, b and e 'the Defendants, individually and jointly' with 'the Defendants, individually and/or jointly'. The alleged infringing acƟons have been taken place already, so the circumstances of the case have not changed. The Claimant, having doubts of the involvement of both Defendants in the infringing acƟvity, had the possibility to formulate its claim accordingly. Added 'or' to the claim extends the scope of an injuncƟon.
The Claimant asks to add 'contribuƟng to infringement' to claim 1.1. a and e. and 'the G7 App and/or the G7 Receiver) or components thereof' to claim 1.1. b. The Court discussed 'contributory infringement' during the interim hearing with the parƟes as the term is not used in the UPCA. The mere fact that a term is not used in the UPCA, is not a ground for refusal, but the Court is in the posiƟon that proposed amendments also extend the scope of the claim. The Claimant iniƟated proceedings based on direct and indirect infringement. There is no menƟoning of any Defendants contribuƟng to the infringement. If the term 'contribuƟng to infringement' is alternaƟve wording to indirect infringement, there is no need to amend the claim, as indirect infringement is in the claim. In case the Claimant meant something else with 'contribuƟng to infringement' , then it is considered expansion of the claim and it is not grounded as the circumstances of the case have not changed.
The Court is in the posiƟon that alternaƟve claims provided by the Claimant, are not needed as the Court may grant the relief in full or in part as requested according to the art 76.1 UPCA. It sƟpulates that the Court shall decide in accordance with the requests submiƩed by the parƟes and shall not award more than is requested, meaning that the Court may award less or grant the claim partly.
ApplicaƟon to provide informaƟon
The Claimant seeks an order pursuant to Rule 191 in response to the Dependents argumentaƟon that it has been not sufficiently proven that Defendants are commiƫng infringing acts. The Claimant argues, that Dexcom did not dispute the same in the parallel proceedings before the Munich Local Division of this Court in the case regarding EP4087195 with case number 584295/2023. Despite having placed test purchases and having submiƩed a broad variety of supporƟng evidence, the facts of this case are that Dexcom has contested that Dexcom Inc. and Dexcom InternaƟonal are responsible for offering, supplying and/or placing the G7 System on the market. Therefore, AbboƩ requests this Court to order Dexcom to communicate how the distribuƟon of the G7 System is arranged.
Defendants asked the Court to dismiss the applicaƟon. AbboƩ filed idenƟcal applicaƟons in the parallel proceedings before the Paris Local Division (ACT_587074/2023 involving EP 3 988 471) and The Hague Local Division (ACT_ 586899/2023 involving EP 4 070 727). The Paris Local Division has dismissed AbboƩ's idenƟcal applicaƟon.
The Defendants are in the posiƟon, that the applicaƟon is inadmissible. It is not substanƟated and AbboƩ abuses R. 191 RoP in an aƩempt to reverse the burden of proof. AbboƩ already has sufficient informaƟon regarding the distribuƟon chain of the G7 System, based on publicly available informaƟon, and therefore does not jusƟfy why the informaƟon requested would be necessary to advance its case. AbboƩ had idenƟfied local distributors of Dexcom's products, but chose not to sue them in these proceedings. The applicaƟon is clearly disproporƟonate and require disclosing Defendants confidenƟal business informaƟon. It is contrary to the front-loaded nature and efficiency of UPC proceedings. The informaƟon has to be sufficient before filing the claim.
During the interim conference the Court discussed with the parƟes the meaning of 'jusƟfied and proporƟonate'.
The Court find the applicaƟon admissible, but not jusƟfied.
Art. 67 UPCA sƟpulates that the Court may, in response to a jusƟfied and proporƟonate request of the applicant and in accordance with the Rules of Procedure, order an infringer to inform the applicant of: (a) the origin and distribuƟon channels of the infringing products or processes; (b) the quanƟƟes produced, manufactured, delivered, received or ordered, as well as the price obtained for the infringing products; and (c) the idenƟty of any third person involved in the producƟon or distribuƟon of the infringing products or in the use of the infringing process. Rule 191 RoP sƟpulates that the Court may in response to a reasoned request by a party order the other party or any third party to communicate such informaƟon in the control of that other party or third party as is specified in ArƟcle 67 of the Agreement or such other informaƟon as is reasonably necessary for the purpose of advancing that party's case. Rule 190.1 second sentence, .5 and .6 shall apply mutaƟs mutandis.
The right to informaƟon is also regulated in the DirecƟve 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (Enforcement DirecƟve). Therefore art 67 UPCA and Rule 191 RoP have to be interpreted in the light of Enforcement DirecƟve.
This Court follows the approach of the Paris and Dusseldorf LD in the interpretaƟon of the law. The fact that the Claimant chose to liƟgate only against the Defendants and not file a claim against local distributors, does not diminish the possibility to ask for distribuƟon informaƟon. Rule 191 has to be interpreted widely and the request for informaƟon may be invoked at different stages of the procedure- during the wriƩen or interim proceedings and also during the separate procedure for damages. Therefore, the applicaƟon is admissible.
As regards the present dispute, the Court notes that the applicaƟon is not jusƟfied because first of all there are evidence already presented by the Claimant. The Defendants did not contest the facts at the interim conference, but they contested the legal interpretaƟon of the facts. The assessment of evidence is a substanƟve aspect that the Court will consider in the judgment. Second of all, the applicaƟon is too broad in its essence. At the interim conference, the Court discussed the maƩer with the parƟes and pointed out that the request may mean that detailed informaƟon like invoices, shipment documents are presented, or it may mean mere declaraƟon of the distribuƟon chain by
the management of the Defendants. The Court order has to be as precise as possible, so that the obligated person may understand without a doubt what kind of informaƟon one has to provide. Therefore, the applicaƟon is dismissed as unproporƟonate.
Requests that grounds for revocaƟon based on the Heller document are dismissed
The Claimant filed the request to exclude Heller document as prior art. Heller document was included by Defendants on 12 August 2024 in its Reply to the Defence to RevocaƟon as evidence D24.
The Claimant argues, that the submission of new grounds for revocaƟon, that were not included in the Counterclaim for RevocaƟon, is contrary to the frontloaded character of the UPC proceedings. UPC Central division (Paris seat) issued decision on 29 July 2024 between Bitzer Electronics A/S and Carrier CorporaƟon and stated that new grounds for revocaƟon are inadmissible as they are not permiƩed by the Rules of Procedure and, in general, are contrary to the front-loaded character of the 'UPC' proceedings.
Dexcom submiƩed Heller in alleged response to AbboƩ's posiƟon that claims 1 and 5 cover an integrated analyte monitoring assembly, i.e. sensor and sensor electronics that are integrated prior to sensor inserƟon. The filing of Heller was not triggered by something new that was stated in AbboƩ's Defence to the Counterclaim or its CondiƟonal Amendment ApplicaƟon, but rather invoked against claims 1 and 5 of the Patent as granted based on AbboƩ's original construcƟon of such claims as set out in its Statement of Claim dated 20 November 2023. Nevertheless, should the Court decide to allow Heller into the proceedings, AbboƩ must be given the opportunity to assess whether further condiƟonal amendments to the Patent should be suggested.
The Defendants replied orally at the interim conference and asked the Court to dismiss the applicaƟon.
The Court finds the applicaƟon jusƟfied and the Heller document is dismissed form the file. The UPC procedure is front-loaded procedure and the ground for revocaƟon and the supporƟng documents for that should have been submiƩed with the counterclaim. According to the Rule 25 1 (b), (c) and (d) the counterclaim for revocaƟon has to include all the grounds for revocaƟon, the facts and evidence relied on.
The Heller document was submiƩed to the Court by Defendants on 12 August 2024 in its Reply to the Defence to RevocaƟon. The Court is in the posiƟon that all the ground for revocaƟon should have been presented in the counterclaim. The Court is also in the posiƟon, that the Court can dismiss a part of the pleadings and the documents (evidence) submiƩed in support of the factual allegaƟon or legal reasoning.
The deadlines for the further proceedings and the oral hearing
The Court discussed the procedure and the oral hearing with the parƟes. The parƟes agreed to file their posiƟons within one month and final reply within another one month.
According to the Rule 29 (d) and 32.3 RoP the parƟes are invited to file the Rejoinder to the Reply to the Statement of Defence and the Rejoinder to the Reply to the Defence to the Counterclaim and a Reply to the Defence to an ApplicaƟon to Amend the Patent.
The parƟes indicated at the interim conference that they want to present expert evidence before the oral hearing. The parƟes are invited according to the Rule 176 8a), (b) and (c) to set out relevant
informaƟon and to clarify in a concise manner the reasons to hear expert witnesses and specify the specific technical issues on which experts will be heard in their first submissions to the Court.
The Claimant is also invited to give wriƩen comment to the request for the security of legal costs.
ORDER
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- Dismiss the applicaƟon to amend the prayer.
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- Dismiss the applicaƟon to provide informaƟon
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- Dismiss the grounds for revocaƟon based on the Heller document.
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- The parƟes are invited to present Rejoinder to the Reply to the Statement of Defence and the Rejoinder to the Reply to the Defence to the Counterclaim and a Reply to the Defence to an ApplicaƟon to Amend the Patent and the Rejoinder within two months.
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- The parƟes are invited to indicate the informaƟon set out in Rule 176 RoP.
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- The Claimant is invited to give wriƩen comment to the request for the security of legal costs.
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- The oral hearing will take palace 19.12.2024 at the Nordic-BalƟc Regional Division in Stockholm.
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- The hearing of the party experts will take place 18.12.2024 at the Nordic-BalƟc Regional Division in Stockholm.
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- The Court and the Registry will inform the parƟes of the exact Ɵme and locaƟon of the hearing in due Ɵme.
ORDER DETAILS
Order no. ORD_ 55063/2024 in ACTION NUMBER: ACT_588346/2023 and ACT_14848/2024 UPC number: UPC_CFI_430/2023
Action type: Infringement Action and counterclaim
Related proceeding no 35051/2024; 35044/2024; 49195/2024.