Abbott Diabetes Care Incorporated & Ors v Dexcom Incorporated & Ors
[2023] EWHC 2591 (Ch)
Abbott Diabetes Care Inc & Ors v Dexcom Inc & Ors
28 June 2024
[2024] EWHC 1664 (Pat)
High Court
A company sued another company for copying its design for a blood sugar monitor. The judge decided the copied design wasn't actually a copy because the patent wasn't clear enough, and the design was an easy improvement on older technologies. Basically, it wasn't a new enough invention to be protected.
Key Facts
- •Trial concerned alleged infringement and validity of EP 3 730 044 B1 ('EP044' or 'the Patent') for a compact on-body physiological monitoring device.
- •The Patent claims an integrated CGM system where sensor and sensor electronics unit are integrated before insertion, unlike prior art 'two-part' systems.
- •Alleged infringement was Dexcom G7 product.
- •Dexcom alleged invalidity due to obviousness (over Heller, Ethelfeld, Fennell), added matter (claim 5), and insufficiency.
- •Key issues involved the skilled addressee, roles of skilled team members, common general knowledge (CGK), and obviousness arguments.
Legal Principles
Purposive construction of claims.
Saab Seaeye Ltd v Atlas Electronik GmbH [2017] EWCA Civ 2175, Icescape Ltd v Ice-World International BV [2018] EWCA Civ 2219
Obviousness assessment using Pozzoli framework.
Pozzoli v BDMO SA [2007] RPC 37
Relevance of motivation to find a solution, research avenues, effort, and expectation of success.
Generics (UK) Ltd v H Lundbeck [2007] RPC 32, Conor v Angiotech [2008] RPC 28
Avoidance of hindsight in obviousness assessments.
British Westinghouse Electric & Manufacturing Co Ltd v Braulik (1910) 27 RPC 209, Jarden Consumer Solutions v SEB SA [2014] EWHC 445 (Pat)
Relevance of commercial considerations in obviousness, particularly when substantial changes to prior art are needed.
Koninklijke Philips NV v Asustek Computer Corp [2019] EWCA Civ 2230
Added matter assessment based on disclosure in application as filed.
Bonzel
Outcomes
Dexcom G7 does not infringe EP044.
Narrow construction of 'coupled' in claim 1 limits it to manual insertion, which the G7 does not use.
EP044 is invalid for obviousness over Heller.
Minimal differences between Heller's disclosure and claim 1; routine design implementation choices were needed to adapt Heller's teaching to the claimed invention.
Added matter attack on claim 5 fails.
Application as filed discloses engagement and disengagement of the introducer needle with the sensor electronics assembly.