DexCom v Abbott Scandinavia Aktiebolag (CFI, 31 July 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision on the merits of 31 July 2024 (UPC_CFI_233/2023), the Munich Local Division revoked in its entirety DexCom’s EP 3 797 685, which concerns communication between the sensor electronics and the display device of a continuous glucose monitoring system. It dismissed both auxiliary requests to amend and, as a result, all infringement claims brought against ten Abbott group companies in respect of the FreeStyle Libre 2 system. Claim 1 was held novel but lacking inventive step over the Berman document combined with common general knowledge. The decision matters to practitioners in two respects: it confirms that a counterclaim for revocation can dispose of the whole infringement action even where use of the teaching is not disputed, and it treats a choice between known protocols, driven by a trade-off between range, energy and reliability, as a mere design choice.

Facts and procedure

The patent, a divisional of EP 3 435 866 claiming priority of 31 March 2016, requires data transmission over Bluetooth or BLE at predefined times and NFC or RFID communication for starting sessions and retrieving data on demand. DexCom sued Abbott Laboratories, Abbott Diabetes Care Inc. and eight other group companies. The defendants did not dispute that their products use the teaching of the patent but filed ten counterclaims for revocation. DexCom filed two applications to amend under Rule 30 (App_2178/2024). The decision also records that an opt-out declared on 1 June 2023 was withdrawn on 3 July 2023, without drawing any particular consequence from it. As to the parent patent, the Paris Local Division revoked it in full on 4 July 2024, and the German Federal Patent Court had expressed a preliminary view of invalidity on 26 March 2024.

The applicable law

The grounds of revocation are those of Articles 54, 56 and 138(1) EPC, to which Article 65(2) UPCA refers. In assessing whether a prior art document would have attracted the skilled person’s interest, the Division relied on Court of Appeal case law (UPC_CoA_335/2023). Costs follow Article 69 UPCA.

Question

Is a claim combining a Bluetooth-type protocol for periodic transmission with a near-field protocol for on-demand access inventive over a document listing those protocols as possible options, and do the proposed amendments, based on pairing, save it?

Decision

Having defined the skilled person as familiar with both physiological analyte monitoring and portable electronic systems, including the NFC and Bluetooth protocols (leaving open whether this is one person or a team), the Division construed claim 1 as requiring two different protocols. Berman does not clearly disclose two distinct protocols, so novelty was upheld. However, the objective problem being to optimise the energy consumption and other resources of the system, the skilled person receives from Berman the suggestion to use a near-field protocol for on-demand requests. Choosing BLE for periodic transfer and NFC for on-demand access has no particular or surprising effect and is a matter of design choice. The auxiliary requests, although novel, failed for the same reason: NFC-assisted pairing forms part of the common general knowledge on Bluetooth, as shown by Exhibit D22. In the absence of specific arguments, the dependent claims fell with claim 1. The patent was revoked for the seventeen States in which it had effect, the infringement claims were dismissed and DexCom was ordered to bear the costs.

Key points for practice

• A list of technical options in the prior art may supply the motivation where the claimed combination achieves nothing beyond the expected trade-off between range, energy and reliability.
• A patentee that offers no separate argument on the dependent claims risks seeing them fall with the main claim.
• The Division referred to the Paris decision on the parent patent and to the Federal Patent Court’s preliminary view as material to consider, without treating itself as bound.
• Practical point: once the parent patent has been revoked, amendments to a divisional need a documented technical effect of their own, not a mere choice between known protocols.

Provisions applied

Agreement on a Unified Patent Court

Art. 65(2) and (5), Art. 69 and Art. 73(1)

Rules of Procedure

Rules 30, 118.8, 220.1(a) and 224.1(a)

European Patent Convention

Art. 54, Art. 56, Art. 138(1)

Case law cited

Court of Appeal, UPC_CoA_335/2023 (App_576355/2023), DexCom v Abbott Scandinavia Aktiebolag, Paris Local Division, 4 July 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.