Dexcom and Bird & Bird overturn Abbott infringement claim in the UK
In the wide-ranging patent dispute over continuous glucose monitoring devices, Abbott has experienced a defeat in its infringement action against Dexcom at the UK High Court. The market worth is such that the debate is also playing out at the EPO, the UPC and in Germany, as well as in the US.
13 November 2023 by Konstanze Richter
Dexcom and Abbott are currently going head-to-head over a number of patents covering their respective glucose monitoring devices, known as continuous glucose monitoring, or CGMs. The dispute spans several countries, among them the UK, Germany and the US.
In the UK nullity and infringement proceedings, parties have asserted 17 patents overall. So far, judges have heard three trials, while the courts have listed two further trials for November 2024 and January 2025. According to estimates by the International Diabetes Federation, almost 540 million people globally live with diabetes. As such, the market is vast; the value of the connected medical devices involved in glucose monitoring is only set to grow.
Abbott claims infringement
The trial concerned Abbott’s EP 2 549 918. The patent holder accuses Dexcom of infringing the property right with its G7 Applicator, while Dexcom counterclaimed for invalidity of the patent based on added matter.
However, the High Court has rejected Abbott’s infringement claim and also found the patent valid (case ID: HP-2021-000025). In autumn 2022, the EPO Boards of Appeal had also maintained EP 918 in amended form (case ID: T 0629/19).
CGM technology enables people with diabetes to monitor the level of glucose in their blood. This is achieved by inserting a tiny sensor beneath the skin, which respectively forms part of a wearable unit adhered to the skin. The sensor measures the concentration of glucose in surrounding tissue and transmits information to a receiver, such as a smartphone, so the user can easily see if their blood glucose is within a normal range.
Dexcom files at the UPC
Given the growing market value of the devices, the two opponents are fighting fiercely before national courts, as well as at the EPO and the UPC. In 2022, for example, the Regional Court Mannheim dismissed a case brought by Abbott against Dexcom.
Meanwhile Dexcom has brought actions before the UPC in the Munich local division (case IDs: ACT_583791/2023 and ACT_547520/2023) and the Paris local division (case ID: ACT_583778/2023) regarding four patents owned by Dexcom (EP 3 831 282, EP 3 797 685, EP 4 111 949 and EP 3 435 866).
Teams across Europe
Abbott turned to its regular advisors Taylor Wessing in both the UK and Germany. Traditionally strong in life science, the patent practice is developing a solid reputation for litigating for clients in the growing medical devices sector. In Germany, another strong partner team leads for the firm, led by Dietrich Kamlah and Christian Lederer. A pan-European team of the firm also represents Abbott in the UPC proceedings.
The patent law firm Mathys & Squire represented the patent proprietor in the EPO opposition. The firm was also responsible for the filing of the patent. In Germany, patent attorneys from Betten & Resch cooperated with the litigators from Taylor Wessing in the national lawsuit. Across the Atlantic, Kirkland & Ellis and McAndrews Held & Malloy run US litigation proceedings for the company.
Medical device expertise
Bird & Bird represents Dexcom in the UK proceedings. Here, partners Robert Williams, Morag Macdonald and Chris de Mauny have taken charge on the litigation side.
While Dexcom relied on Paris-based Bird & Bird partner Anne-Charlotte Le Bihan for the UPC proceedings in Paris, Quinn Emanuel frontman Marcus Grosch runs the case in Munich. The US-based firm also represents Dexcom in the US.
The EPO opposition against Abbott’s EP 918 was led by Hoffmann Eitle.
For Abbott
8 New Square (London): Daniel Alexander, James Whyte, Jennifer Dixon
Taylor Wessing (London): Nigel Stoate, Simon Cohen, Matthew Royle, Amanda Ebbutt, Michael Washbrook, Tom Foster (partners); associates: Edward Vickers, Andrew Payne, Justyna Ostrowska, Rebecca Limer, Sarah Nesbitt, Tom Witte, Katie Atkinson, Alexander Walker, Justin Hoggard, Lydia Birch
Mathys & Squire (London): Catherine Booth (partner, patent attorney)
For Dexcom
11 South Square (London): Iain Purvis, Benet Brandreth, Chris Hall, David Ivison
Bird & Bird (London): Robert Williams, Morag Macdonald, Chris de Mauny, Jae Park (partners); associates: William Warne, Sam Triggs, Georgina Straughan, Anna Jackson, Imogen Kelso, Patrick Brown, Vrinda Gambhir
High Court of England and Wales, London
Jonathan Richards (presiding judge)
