Auxiliary Requests Refused Due to UPC’s Strict Added Matter Requirements

In the latest decision in the DexCom vs Abbott saga at the UPC, the Paris Local Division refused DexCom’s three auxiliary requests to amend on the ground of added matter. The decision sheds further light on the UPC’s approach to the assessment of added matter, and in particular confirms that the UPC is not substantially deviating from the EPO’s strict requirements.

The Paris Local Division’s decision relates to UPC CFI 395/2023, a case in which the proprietor of EP3831282, Dexcom, lodged an infringement action against 14 Abbott entities. The Abbott entities filed a counterclaim for revocation with their statement of defence, in response to which DexCom submitted three auxiliary requests to amend the patent. In Abbott’s rejoinder to DexCom’s defence to the counterclaim for revocation, an objection of added matter was raised for the first time against the claims of the patent as granted, as well as the three auxiliary requests.

The Court did not admit the added matter objection insofar as it related to the claims of the patent as granted because it found no legitimate reason to raise a new ground for revocation at such a late stage of proceedings, emphasizing the front-loaded nature of UPC proceedings. The Court’s conclusion is summarised in Headnote 1 of the decision:

“1. The order pursuant to Rule 36 RoP issued by the judge-rapporteur relates to adding some arguments to the debate related to some specific terms regarding claim interpretation, but it did not authorise the defendant to raise a new ground for revocation. The UPC procedure is a front-loaded system and the Court finds no legitimate reason for the defendant, which had already stated its own claim interpretation in its Statement of Defence and counterclaim, to raise a new ground for revocation at a later stage of the proceedings concerning the validity of the patent as granted. The additional ground concerning the patent as granted raised in the Rejoinder to the reply to the Statement of Defence is inadmissible pursuant to Rule 9.2 RoP”.

The Court nonetheless found that the claims of the patent as granted were invalid on the ground of lack of inventive step. The Court therefore turned to the claims of the auxiliary requests where it was necessary to consider Abbott’s objection of added matter in detail.

Central to the issue was that the Court had interpreted certain features in claim 1 of the patent as granted in a different way to Dexcom, who argued for a narrower interpretation based on the description. The Court considered that there was an incompatibility between the wording of several claim features and particular sections of the description relied on as a basis for amendment. Perhaps unsurprisingly, the Court thus held that claim 1 of the three auxiliary requests did not find basis in the application as filed because the new features introduced into claim 1 of each request combined with the remaining subject matter of claim 1 (as interpreted by the Court) in a way that extended beyond the content of the application as filed.

In coming to this conclusion, the Court noted that, when assessing added matter,

“a question to be addressed is whether the skilled person considering a claim would be confronted with new technical information based on what was derivable, directly and unambiguously, from the whole contents of the description, claims and figures of the earlier application” (Headnote 2, emphasis added).

This statement corresponds with the EPO’s “Gold Standard” requirement for the assessment of added matter. It therefore appears that the UPC’s approach to added matter is closely aligned with that of the EPO.

The approach taken to the assessment of added matter by the Paris Local Division in this decision will be comfortingly familiar to EPO practitioners. The decision suggests that EPO practice and case law are likely to continue to have a strong influence on the assessment of added matter at the UPC.