UPC Munich Local Division on Novelty and Inventive Step

In a decision dated July 31, 2024, the Unified Patent Court's Local Division in Munich addressed a case involving DexCom, Inc. and a series of defendants led by Abbott Laboratories. The case revolved around DexCom’s patent EP 3 797 685, concerning advanced communication protocols in analyte monitoring systems, crucial for managing diabetes.

Key Points from the Decision
The court concluded that while the prior art disclosed a system with capabilities akin to those claimed in DexCom’s patent, it did not unambiguously disclose the use of two distinct communication protocols for their respective functions, thereby confirming novelty. On the inventive step, the court diverged from a previous decision of the EPO. Interestingly, the Local Division Munich did not apply the so-called "problem-solution approach" and highlighted the following points:

• “The choice made in the system according to claim 1 also has no particular or surprising effect .“
• “As to any practical drawbacks to be overcome, neither claim 1 nor, more generally, the patent at issue discloses any technical details as to the concrete implementation that would improve hardware integration, address power requirements or costs in the on-body sensor control device.”
• “There is also no particular effect mentioned in the description associated with the particular choice of the second communication protocol.”

From this, it becomes clear that it is highly important to explicitly describe any, ideally superior and/or surprising, effects of potential claim features in the description. Particularly for US applicants or drafters, this might serve as a reminder of the importance of a comprehensive and thorough disclosure of any technical effects which might become important for an inventive step argument.

Result
The Munich Local Division ultimately revoked EP 3 797 685, citing a lack of inventive step over the prior art, significantly impacting DexCom’s enforcement actions against the Abbott entities regarding the alleged infringement. 

Key takeaways

• Novelty Affirmed but Inventive Step Lacking: The Munich Local Division revoked the patent due to a lack of inventive step, noting that the patent did not demonstrate any surprising effect or substantial improvement over existing technologies which are crucial considerations under European patent law.
• Implications for Patent (Drafting) Strategy: The revocation of DexCom's patent underscores the necessity for patent drafters to meticulously describe not only the features of the invention but also the advantageous effects and improvements over the prior art. 

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