Abbott Diabetes Care Incorporated & Ors v Dexcom Incorporated & Ors
[2023] EWHC 2591 (Ch)
Abbott Diabetes Care Inc & Ors v Dexcom Incorporated & Ors
15 January 2024
[2024] EWHC 36 (Pat)
High Court
Two companies making devices for diabetics argued about who invented what. A judge looked at the inventions and earlier similar things to decide who invented what first. The judge decided that none of the new inventions were really new or surprising, so the patents were invalid.
Key Facts
- •Abbott and Dexcom, leading CGM device manufacturers, were involved in a patent dispute concerning four patents.
- •The patents in question related to features involving providing users with information about blood glucose levels and other characteristics (except EP223, which dealt with application installation checks).
- •Three trials were conducted; Trial A covered EP627, EP223, EP159, and EP539.
- •EP625 was withdrawn by Abbott before trial.
- •Various prior art citations were considered in assessing validity.
- •Expert witnesses from both sides provided evidence on technical and clinical aspects.
Legal Principles
Purposive construction of claims.
Saab Seaeye Ltd v Atlas Electronik GmbH [2017] EWCA Civ 2175 and Icescape Ltd v Ice-World International BV [2018] EWCA Civ 2219
Anticipation requires clear and unambiguous disclosure of all claimed features.
T/396/89 UNION CARBIDE/high tear strength polymers [1992] EPOR 312 and Synthon's Patent [2005] UKHL 59
Obviousness requires consideration of what real-life skilled people would think and do. The question 'why wasn't it done before?' is a powerful consideration, particularly when all components have been long and widely known.
Actavis v. ICOS [2019] UKSC 15, Generics v. Lundbeck [2007] EWHC 1040 (Pat), Teva v Leo [2015] EWCA Civ 779, Technip France SA’s Patent [2004] EWCA Civ 381
Patent claims must be clear and concise.
§14(5)(b) of the Patents Act 1977
Amendment of a patent claim is not allowed if it extends protection.
Hospira v Genentech [2014] EWHC 3857
The skilled person is presumed to read prior art, but not necessarily with an expectation of relevance or utility. Documents from distant or unrelated fields are less likely to be considered.
Inhale v Quadrant [2002] RPC 21
Outcomes
EP627 invalid for lack of novelty (anticipated by the STS Guide), not obvious over Bunte.
The STS Guide disclosed all the elements of EP627 claim 1. The court rejected Abbott's arguments regarding the interpretation of 'predetermined routine' and 'second indication'. Bunte, while related, was deemed not applicable to the CGM context without hindsight.
EP223 claim 1 invalid for lack of novelty (anticipated by Gejdos). Not obvious over Lebel.
Gejdos disclosed all the elements of EP223 claim 1. The court rejected Abbott's arguments concerning the scope of the installation and functional checks and the application of Lebel to smartphone technology. Claims 7 and 9 were deemed obvious given the invalidity of claim 1.
EP539 amendments disallowed for extending protection and lacking clarity. EP539 and EP159 invalid for lack of novelty (anticipated by Brauker and Shariati) and obviousness.
The amendments to EP539 extended the scope of protection. The court found that Brauker and Shariati disclosed the inventive concept of EP159/EP539. The court rejected Dexcom's arguments concerning the skilled team's mindset and the alleged lack of obviousness.