Sibio v Abbott (UPC_CFI_231/2024)
Decision date:
21 July 2025
Osborne Clarke summary
- The Paris CD rejected Sibio's revocation action (based on added matter and lack of novelty and inventive step) against Abbott's patent relating to a wearable blood-glucose monitoring device.
- This was a parallel action to infringement proceedings between the same parties in The Hague LD. In that action, in February 2025 the Court of Appeal (CA) reversed a rejection of provisional measures against Sibio, holding that the patent was likely valid and infringed. The infringement case was ongoing at the time of this decision, with Sibio recently having filed a revocation counterclaim.
- In this case, the Paris CD first addressed several procedural issues.
- Firstly, it considered Rule 75.3 RoP which requires that, where a revocation counterclaim is brought in parallel infringement proceedings between the same parties, the CD should stay any 'freestanding' revocation claim. Here, however, the counterclaim in the infringement case had been filed after the oral proceedings in the revocation action. The court held that the principles of flexibility and efficiency set out in the Preamble to the RoP meant that the rule should not apply in these circumstances and gave judgment.
- Secondly, it rejected a new novelty attack and attempt to extend the added matter attacks to the dependent claims that Sibio had introduced in its reply to Abbott's defence. The court pointed out that a claimant in revocation proceedings must specify the grounds for invalidating the contested patent in detail, as well as the prior art documents relied on, in its original claim. New facts and arguments may be admitted in response to the defence, but the court held that Sibio's new arguments did not follow the defence and there were no objective obstacles to their earlier presentation.
- The new novelty attack was based on prior art that was already in the case. However, whilst Sibio had analysed it for inventive step, it had not done so for novelty. The court held that Sibio's mere "general reference" to the fact the document would be used to challenge novelty or inventive step was insufficient. In order to establish that it was being used to challenge novelty, Sibio should have "provid[ed] a detailed analysis of the document with respect to novelty" in its original claim. In relation to the added matter attacks, the court noted that, although dependent claims are subordinated to the independent claims, the grounds for their revocation must be stated at the outset, as this is part of the overall challenge to the patent.
- Thirdly, the court allowed six auxiliary requests to be filed by Abbott. Sibio had objected to these on the basis that they were not filed using the correct form under Rule 30 RoP, meaning that the Court of Appeal was unaware of them in the parallel action, which Sibio alleged might have affected its decision. The Paris CD noted that the right to request amendment is an "essential part of the right to defend" a patent and a "substantive right" under Article 138(2) EPC and Article 63(3) UPCA. It held that "giving greater weight to the electronic form than to the substantive content would violate the principles of proportionality and fair trial".
- The Court of Appeal had considered and rejected added matter attacks in the provisional measures appeal. The Paris CD noted that, while the Court of Appeal's reasoning was not binding as it only made a summary assessment, it "cannot, however, be disregarded, considering the authority of the issuing body".
- The Paris CD nonetheless made its own assessment, applying the so-called 'gold standard' test of direct and unambiguous disclosure. It emphasised that "strict compliance with the requirements of the gold standard…is of paramount importance for legal certainty". Nevertheless, it went on to reject the attacks.
- The court also rejected the novelty and inventive step attacks. One novelty attack inter alia required a combination of two embodiments, which the court was "not convinced were…disclosed in combination…, at least not in a direct and unambiguous manner". The other failed to disclose all features of the independent claims.
- For the inventive step attacks, the first item of prior art related to another on-body device for glucose monitoring. However, there were significant differences from the patent. The Paris CD found that Sibio had "not identified a clear incentive in the prior art for the skilled person to modify the device" in the significant ways required and "not convincingly explained why the skilled person would make such a modification, how exactly they would make this modification, and whether the modified device would still be suitable". Similarly, it rejected the second inventive step attack, holding that Sibio had "not identified any pointer in [the prior art] which would motivate the skilled person to endeavour to carry out this dramatic design change, let alone which would teach them how to carry it out in practice".
- The court did not consider the attacks it held were late filed, so these would need to be considered on appeal or remitted if the Court of Appeal were to overturn the Paris CD's procedural ruling.
Issue
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