DexCom v Abbott Scandinavia Aktiebolag (CFI, 4 July 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By a decision of 4 July 2024 (UPC_CFI_230/2023, ACT_546446/2023), following an oral hearing on 24 May 2024, the Paris Local Division (C. Lignières, presiding and judge-rapporteur, R. Lopes, C. Gillet, A. Dumont, technically qualified judge) dismissed DexCom, Inc.’s infringement action against ten Abbott group companies concerning the FreeStyle Libre 2 system and, on the counterclaim, revoked EP 3 435 866 B1 (« Analyte Monitoring System ») in its entirety for the Contracting Member States listed in the order, including Germany and France.

The decision holds that a territorial carve-out by the claimant does not limit the counterclaim for revocation, which may cover the German part of the patent. It applies Arts. 29 and 30 of the Brussels I recast Regulation directly to the UPC as a common court and declines to cede jurisdiction to the German Federal Patent Court, seised earlier.

Facts and procedure

DexCom sued the Abbott companies on 7 July 2023, carving out acts already pending before the Mannheim Regional Court against three of them. It sought, among other things, permanent injunctions and an interim award of damages of EUR 500,000. Abbott counterclaimed on 13 November 2023 for revocation of the whole patent. DexCom filed two auxiliary requests to amend. One defendant had brought a nullity action against the German part before the Federal Patent Court on 9 May 2023, the EPO Opposition Division had rejected an opposition on 20 April 2023.

The applicable law

Jurisdiction rests on Arts. 31, 32(1)(a) and 33(2) and (3) UPCA and on Arts. 29, 30, 71a and 71c of Regulation (EU) No 1215/2012. Claim interpretation follows Art. 69 EPC and its Protocol, applying the principles set by the Court of Appeal. Validity is assessed under Arts. 54, 56 and 138(1)(c) and (d) EPC, costs fall under Art. 69 UPCA and Rule 118.5 RoP.

Question

May a defendant seek revocation of the German part of a patent that the claimant carved out of its action, despite an earlier nullity action before the German court, and is EP 3 435 866 valid as granted or as amended?

Decision

On jurisdiction, the panel holds that the principle that the parties define the subject matter of the dispute allows a carve-out, but cannot restrict the defendant’s challenge to validity: no provision ties the counterclaim to the parts of the patent asserted, and revocation has erga omnes effect. Arts. 29 and 30 of the Brussels I recast Regulation apply directly to the UPC by virtue of Art. 71a. There is no lis pendens, as the parties and the subject matter are not the same. The actions are related, but the panel retains jurisdiction over the whole patent, given the UPCA’s aim of efficiency and the German timetable, with a hearing set for 29 January 2025.

On the merits, claim 1 covers a system in which a first portion of data is sent by Bluetooth or BLE and a second, in response to a command, by NFC or RFID. The portions may overlap but may not be identical, and neither can mean all of the data. The claim is novel over D1 (Berman), D2 (Cole) and D3 (Bernstein), but lacks inventive step over D1 and common general knowledge: D1 lists four protocols for on-demand transfer, already uses NFC for the request, and the patent ascribes to NFC no effect beyond its known properties. Auxiliary request 1 (BLE only and establishing a connection) lacks inventive step. Auxiliary request 2 adds matter beyond the application as filed (Art. 138(1)(c) EPC). DexCom bears the costs. Abbott’s unreasoned request for an interim costs award of EUR 100,000 is dismissed.

Key points for practice

• A territorial carve-out in the infringement claim does not deprive defendants of a counterclaim for revocation covering all territories, including the one carved out.
• An earlier national nullity action, limited to one national part and brought by a single defendant, does not give rise to lis pendens. Relatedness leaves the UPC a discretion, which it exercises here by keeping the case.
• Choosing one protocol from a closed list disclosed in the prior art, without any particular technical effect, does not support inventive step.
• Practical point: dependent claims must be defended with arguments of their own, otherwise the panel will not examine them separately.

Provisions applied

Agreement on a Unified Patent Court

Arts. 31, 32(1)(a), 33(2) and (3), 65, 69 and 73(1)

Rules of Procedure

Rules 19, 30.1, 118.5, 151, 220.1 and 224.1

European Patent Convention

Art. 54, Art. 56, Art. 69 and Protocol on its interpretation, Art. 138(1)(c) and (d)

Other provisions

Regulation (EU) No 1215/2012, Arts. 29, 30, 71a and 71c

Case law cited

10x Genomics v NanoString, Court of Appeal, 26 February 2024, Court of Appeal, UPC_CoA_1/2024, EPO Enlarged Board of Appeal, G 2/10

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.