Context:
- Medical device makers Abbott and Dexcom are embroiled in a two-way patent spat in which the former defeated one of the latter’s patents in the Unified Patent Court’s Paris Central Division (CD) (July 4, 2024 ip fray article).
- Amycel is suing a Polish individual in the Hague Local Division (LD) over a mushroom patent (June 26, 2024 ip fray article).
What’s new:
- The Munich LD today ruled in Abbott’s favor in another case (PDF). Abbott’s revocation claim succeeded (though the decision is obviously appealable), which at least for now disposes of the related infringement allegations.
- The Hague LD granted Amycel a preliminary injunction (PI) against a Polish farmer whose name is redacted out, prohibiting the sale of a certain type of mushroom in the Netherlands, France, Germany and Italy (PDF).
Direct impact: Appeals appear likely in both cases.
Wider ramifications: While Dexcom will presumably continue to try, it is running out of patents-in-suit unless it revives one or more of them on appeal.
1. Dexcom v. Abbott (Munich): patent-in-suit destroyed, short of successful appeal
Dexcom’s EP3797685 (“Systems and methods for display device and sensor electronics unit communication”) is in roughly the same field of technology, but with more of a focus on wireless communications, as the patents medical device maker Masimo is asserting against Apple in the U.S. Apple Watch import ban case (July 20, 2024 ip fray article).
In 17 UPC countries (Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden), it is now invalid, though Dexcom can try to revive it through an appeal.
The Munich LD focused primarily on a U.S. patent application (US 2015/0205947 A1) (“Berman“). While Berman was not found to anticipate the patent-in-suit, the difference is too marginal to be considered inventive. The following paragraph declares the patent non-inventive over the combination of Berman with common general knowledge, the proof of the latter being what, among others, a standardization document says:
“Berman does not explicitly describe how a pairing is carried out. However, the skilled person knows that the pairing of different devices can be carried out in a secure manner by using NFC-assisted pairing as can be seen, for example, from the document ‘Bluetooth Secure Simple Pairing Using NFC’ (Exhibit D22) published on 9 January 2014 by the groups responsible for the development of the Bluetooth and NFC specifications, namely the Bluetooth Special Interest Group and the NFC Forum. This document is considered to be common general knowledge in its field.”
One can always argue over how to establish the lack of an inventive step, but ip fray‘s first impression is that the patent lacks technical depth, making the UPC’s decision more than plausible.
The decision was made by the Munich LD’s first panel: Presiding Judge Dr. Matthias Zigann, Judge-rapporteur Tobias Pichlmaier, Judge Tatyana Zhilova (Bulgaria) and Technically Qualified Judge Alain Dumont (a long-time member of the European Patent Office’s Boards of Appeal).
Plaintiff/patentee Dexcom was represented by Quinn Emanuel Germany, and successful defendant Abbott (multiple legal entities) by different Taylor Wessing offices, August Debouzy and patent attorney Dr. Alexander Esslinger of Betten & Resch.
2. Amycel’s mushroom PI against Polish farmer (The Hague)
Amycel has obtained a PI against a Polish farmer (the UPC, as a matter of policy, does not disclose the names of individual litigants) over EP1993350 (“Brown mushrooms for commercial production”).
Para. 13 of the decision discusses the accused product:
“Defendant is a Polish farmer who grows mushrooms and who operates from Poland using his last name [REDACTED] to distinguish his products. He took over the mushroom production from his father. They have been active in the field of mushroom production since well before 1990. Currently, Defendant is offering for sale various white and brown mushroom strains. One of the brown strains offered for sale by the Defendant is called [REDACTED] ‘Cayene’ and is sold under this name in Poland since 2017 according to Defendant.”
Patents on “life” are controversial. In its validity analysis, however, the Hague LD simply relied on an EPO-related rulemaking process (Implementing Regulations of the European Patent Convention, The Proposal CA/56/17 for new Rules 27(b) and 28(2) EPC of the President of the EPO dated 6 June 2017), where “fungi or yeasts” were explicitly not excluded from the scope of patent-eligible subject matter.
The degree of genetic similarity between the accused mushroom and the BR06 strain claimed by the patent-in-suit is less than 100%, but the court accepted the patentee’s argument that this due to technical and biological reasons.
Amycel will have to provide security to the amount of €200K, which the company apparently didn’t object to. That is also the value of the dispute for cost determination purposes.
The decision was made by Presiding Judge Edger Brinkman (who is also a biochemist, a fact that is interesting in the context of this case), Judge-rapporteur Margot Kokke, Judge Rute Lopes (Portugal) and Technically Qualified Judge Steen Wadskov-Hansen.
Plaintiff/patentee Amycel was represented by Brinkhof’s Rik Lambers, and the defendant by JD&P’s Michal Przyluski and Joanna Dargiewicz.