Unified Patent Court
The Hague - Local Division
Einheitliches Patentgericht
Juridiction unifiee du brevet
Procedural Order
of the Court of First Instance of the Unified Patent Court
delivered on 17/09/2024
Date of receipt of Statement of claim: Not provided
Defendant
| Dexcom Inc. | Statement of claim | served on | 30/11/2023 |
|---|---|---|---|
| 6340 Sequence Drive | CA 92121-4356 | San Diego | US |
Defendant
| Dexcom International Limited | Statement of claim | served on | 20/12/2023 |
|---|---|---|---|
| 1 Lampousas Street | 1095 | Nicosia | CY |
REFERENCE CODE ECLI: Not provided
CLAIMANT/S
| 1) | Dexcom International Limited | Represented by Tjibbe Douma |
|---|---|---|
| 1 Lampousas Street | 1095 | |
| Nicosia | CY |
DEFENDANT/S
- Abbott Diabetes Care Inc.
Represented by Eelco Bergsma
(Defendant) - 1360 South Loop Road - CA 94502 - Alameda - US
- Abbott Diabetes Care Inc.
Represented by Eelco Bergsma
(Defendant) - 1360 South Loop Road - 94502 California - Alameda - US
PATENT AT ISSUE
| Patent no. | Proprietor/s |
|---|---|
| EP4070727 | Abbott Diabetes Care Inc. |
No SPC details provided
| Patent no. | SPC ID | National Designations | Holders |
|---|---|---|---|
| No SPC Holders provided |
DECIDING JUDGE
Judge-rapporteur Edger Brinkman
LANGUAGE OF PROCEEDINGS
English
SUBJECT-MATTER OF THE PROCEEDINGS
Counter claim for revocation – amendment of counter claim
ORDER SOUGHT AND DEFENCE
Claimants in the counter claim, defendants in the main infringement claim (hereinafter Dexcom) have requested the court for leave to amend their counter claim as follows:
“III. declare that the Dexcom G7-System used with the G7-Receiver falls outside the scope of protection of EP 4 070 727 B1, and/or that making, offering, placing on the market or using the G7-System used with the G7-Receiver, or importing or storing these products for those purposes does not constitute infringement of EP 4 070 727 B1.”
Dexcom points to the withdrawal of part of the infringement claim by defendants in the counter claim, claimants in the main infringement proceedings (hereinafter Abbott), namely that the G7-System with a G7-Receiver infringes the patent. Abbott maintain the infringement claim against the G7-System with the G7-App. With a claim for a declaration of non-infringement of the G7-System used with a G7-Receiver, Dexcom wishes to obtain legal certainty.
Abbott opposes the requested amendment as it considers it does not meet the requirements of R. 263.2 RoP.
GROUNDS FOR THE ORDER
The JR agrees with Dexcom that they could not reasonably have filed the amendment at an earlier stage. Dexcom indicated their intention to amend the counter claim in their reply to the defence in the counter claim, which is their first written filing (stage) after Abbott indicated their withdrawal of the claims against the G7-System with G7-Receiver. In as far as Abbott contend that this claim could and should have been filed with the Statement of Defence including a counter claim, this is rejected. As Dexcom argue, at the time they could not yet envisage Abbott’s withdrawal. The JR fails to see a valid reason in the mere possibility of such withdrawal that Dexcom should have reasonably anticipated it. After all, the statement of claim in the infringement proceedings clearly indicated otherwise. Subsection B of the statement of claim deals with the alleged infringement regarding the G7-Receiver, while subsection A regards the G7-App. Whether Dexcom have a proper legal interest in this declaration of non-infringement, as Dexcom allege but Abbott contest, is a matter for the panel to decide.
While it may be true that meanwhile Abbott filed its rejoinder in the counter claim (on 22 August 2024), this does not mean Abbott are unreasonably hindered in their defence to it. As will be stipulated below, they can file a separate submission on the amended claim, equally within one month after today (30 days).
ORDER
Leave to amend the claim is granted.
Abbott may respond within 30 days to the amended claim.
ORDER DETAILS
Order no. ORD_52140/2024 in ACTION NUMBER: CC_13898/202423
UPC number: Not provided
Action type: Infringement Action / Counter Claim
Related proceeding no.: ACT_586899/2023