DexCom v Abbott Diagnostics (CFI, 11 December 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By a decision of 11 December 2024 (UPC_CFI_395/2023, ACT_583778/2023), the Paris Local Division revoked in its entirety DexCom, Inc.’s EP 3 831 282, on remote monitoring of analyte measurements, on the counterclaim of fourteen Abbott group companies, and accordingly dismissed the infringement action directed at the LibreLinkUp system. Claim 1 lacked inventive step over Valdes combined with Goodnow, and all three auxiliary requests added matter beyond the earlier application. The decision is also of procedural interest: a new ground for revocation raised for the first time in the rejoinder is inadmissible.

Facts and procedure

DexCom brought the action on 30 October 2023, Abbott raised no preliminary objection and counterclaimed for revocation with its statement of defence (paragraphs 15 and 16). DexCom filed three auxiliary requests to amend (paragraph 18). In its rejoinder of 15 July 2024, Abbott raised added matter against the patent as granted for the first time, which DexCom contested as a new and late ground. An order under Rule 36 of 27 July 2024 then allowed a further exchange (paragraphs 58 to 66). The oral hearing took place on 30 October 2024. Claim 1 concerns a method in which a remote user’s mobile device receives, via a server, an invitation to receive notifications on a host’s glucose status, installs an app and displays those notifications according to modifiable settings (paragraph 31).

The applicable law

The panel applied the Court of Appeal’s principles of claim interpretation (UPC_CoA_335/2023 and UPC_CoA_1/2024), which apply equally to infringement and validity (paragraphs 37 and 38). Inventive step is assessed under Art. 56 EPC, and added matter beyond the content of the earlier application under Art. 138(1)(c) EPC, on a whole-content approach (paragraphs 115 to 117). Admissibility of late grounds is governed by Rule 9.2 and the front-loaded character of the procedure.

Question

Are claim 1 of EP 3 831 282 and the auxiliary requests valid, and is an added-matter ground raised in the rejoinder admissible?

Decision

The Rule 36 order concerned only arguments on the interpretation of certain terms and did not authorise a new ground for revocation, Abbott having already set out its construction in its defence, so the added-matter attack on the patent as granted was disregarded under Rule 9.2 (paragraphs 68 to 70). On interpretation, the panel distinguished the rules set by the host, which govern the generation and receipt of messages, from the remote device’s settings, which govern only their display. DexCom’s reading, though consistent with the description, conflicted with the wording of features 1.1.3, 1.4 and 1.6 and would undermine legal certainty for third parties (paragraphs 49 to 55).

Valdes (US 2011/0320130 A1), the closest prior art, discloses neither the server nor the invitation scheme. On its own, it did not deprive the claim of inventive step (paragraphs 84 to 86). The objective technical problem was how to connect the host’s and remote user’s smartphones to share notifications concerning sensitive medical data (paragraph 88). Goodnow (US 2011/0178717 A1), from the same field, teaches an internet-hosted server and a secure invitation scheme. The order of the steps is a design choice (paragraphs 95 to 102). Claim 1 and the dependent claims fell (paragraphs 103 and 104). Auxiliary requests 1 to 3 introduced modification of the rules through the settings, or distinct server-stored rules, without basis in WO 2014/105631 (paragraphs 128 to 141). DexCom bears the costs (Art. 69 UPCA), Abbott’s request for an interim award of EUR 100,000 was dismissed (paragraphs 145 and 146).

Key points for practice

• A Rule 36 order confined to claim interpretation does not reopen the written procedure to new grounds for revocation.
• The construction adopted for validity, distinguishing rules from settings, directly shaped the added-matter analysis of the auxiliary requests.
• A prior art document may fail on its own and still support a finding of obviousness when combined with a document from the same field.
• Practical point: all grounds for revocation must be set out in the counterclaim, and proposed amendments must remain consistent with the construction dictated by the claim wording.

Provisions applied

Agreement on a Unified Patent Court

Art. 65 and Art. 69

Rules of Procedure

Rules 9.2, 36 and 118.5

European Patent Convention

Art. 56, Art. 69 and Art. 138(1)(c)

Case law cited

Court of Appeal (UPC_CoA_335/2023), Court of Appeal (UPC_CoA_1/2024)

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.