2024 Week 27
In the race to be the first UPC division to produce a written decision on a main action for infringement and validity, last week the UPC Düsseldorf Local Division beat the UPC Paris Local Division by one day. These two decisions both have essentially uncontested infringement but different outcomes on validity. And it is in the determination of inventive step where the courts have added most to an understanding of the direction of travel of the UPC.
Shower tray case – infringed and valid after amendment
Franz Kaldewei vs. Bette litigated EP 3375337 B1, relating to shower trays. Claim 1 defined the way in which the rim of the shower tray is supported using profiled strips formed of rigid plastic foam. Kaldewei sued Bette for infringement and Bette counterclaimed for invalidity. The court decided that these issues should be heard together – in other words that the case should not be bifurcated.
The court decided that claim 1 was novel but not inventive. The modification needed from the closest prior art would be a routine further development for the skilled person. The court did not explicitly follow the EPO problem and solution approach. The court relied to some extent on the admissions made about the prior art in the patent itself, which essentially said that it was conventional to use rigid plastic foam in shower trays.
Kaldewei submitted an auxiliary request which combined of granted claim 1 with dependent claims 2 and 3. The court decided that this claim was inventive because of the lack of motivation provided to the skilled person to modify the prior art to reach an embodiment falling inside the scope of the amended claim.
One slightly throwaway comment from the court particularly catches the eye. In their obviousness attack, the defendant relied on a piece of prior art that was already acknowledged as prior art in the patent. The court observed that the defendant has a harder task to prove invalidity when relying on the patent’s acknowledged prior art. This suggests a presumption of validity over acknowledged prior art in the patent. This point was not determinative in the outcome in this case but if confirmed by the UPC Court of Appeal this would be significant if it changes applicants’ approaches to including a discussion of the prior art in the description.
Kaldewei were awarded an injunction in respective all of the relevant UPC countries and an order forcing Bette to disclose additional commercial information relating to the infringing products.
The court considered the costs of the infringement action and the counterclaim for revocation separately. The claimant did not recover all of their costs for the infringement action because they partially withdrew their requests for some remedies. For this reason, the order for payment of costs were split 15/85 with the defendant paying the majority of the costs of the infringement action. For the counterclaim for revocation, the costs were split 50/50 in view of the defendant’s successful attack on the claims as granted but in view of the validity of the auxiliary request.
Glucose monitoring devices – Abbott wins the rematch
DexCom vs. Abbott concerned infringement and validity of EP 3435866 B1, relating to the switching of communications protocols used in a glucose monitoring system. EP 3435866 B1 is one granted patent in a family of European cases including three divisionals.
What is particularly noteworthy about this case is that the same patent was itself the subject of an EPO opposition, with Abbott being the opponent. The EPO rejected the opposition in May 2023 and no appeal was filed.
As with Kaldewei vs. Bette, this case was an infringement action with a counterclaim for revocation. Again, the issues of infringement and validity were heard together with no bifurcation. The infringement action was essentially uncontested. Here we report on the juicy validity issues but note that there were also some very interesting jurisdictional points addressed by the court – we will report on those in another blog.
Not only were the two sides essentially the same in the UPC as in the EPO opposition, but Abbott also relied on identical prior art. The court carried out a detailed analysis of the prior art and decided to take document D1 (US 2015/205947 A1) as the closest prior art. The court had a different interpretation of the technical disclosure of D1 compared with the EPO opposition division. As it turned out, this was highly significant to the outcome of the case.
The court decided that claim 1 as granted was novel over D1, as had the EPO opposition division, but their analysis led to them to conclude that the technical difference over with D1 was narrower. The court very clearly used the problem and solution approach to inventive step. Their formulation of the objective technical problem was merely “choosing a protocol” for carrying out a step of the claim. In the circumstances, the lack of ambition required by this statement of the problem made a finding of lack of inventive step inevitable.
DexCom filed two auxiliary requests. The amendment in AR1 changed the objective technical problem to be solved to one in which an improvement was required. AR1 claim 1 now had two differences over D1. However, the court decided that these differences could be considered separately for inventive step because they had no synergistic or surprising effect – a mere juxtaposition of features. The court decided that each difference was obvious. This is very similar to the EPO approach to this situation, where the EPO will construct “partial problems” to be solved.
AR2 included an amendment for which basis was given as the description of one of the drawings of the application. The court decided that the amendment used was an impermissible generalisation of the original disclosure and therefore added matter. This is probably the same approach that the EPO would take to this type of amendment. This further reinforces the impression that the UPC is taking essentially the same approach to added matter as the EPO.
Key takeaways
The Kaldewei vs. Bette case is significant as the first decision on the merits. But the DexCom vs. Abbott case really stands out. It is extremely interesting to see the UPC reach a different decision to the EPO opposition division in relation to the same patent with the same parties and relying on the same prior art. The key turning point was the UPC’s technical assessment of the closest prior art document. Without being drawn on which tribunal is technically correct here, what can clearly be seen is that the UPC will take an independent and fresh look at the cited prior art reach their own determination of its relevance.
For companies who have previously been unsuccessful in trying to invalidate a European patent in an EPO opposition, this decision from the UPC makes it clear that having another go at revoking the patent, even with the same prior art and essentially the same arguments, may lead to a different overall result.
