Short Summary
This case concerns an appeal before the Court of Appeal of the Unified Patent Court regarding European Patent EP 3 831 282. DexCom had initiated infringement proceedings against the Abbott companies before the Paris Local Division, which were met by a counterclaim for revocation. The Paris Local Division revoked the patent entirely and dismissed DexCom's infringement claims. On appeal, DexCom withdrew its infringement action and the Abbott companies withdrew their counterclaim for revocation, with both parties consenting to closure of the proceedings.
Detailed Summary
DexCom, Inc. initiated infringement proceedings against fourteen Abbott companies before the Paris Local Division based on European Patent EP 3 831 282. The Abbott companies filed a counterclaim for revocation. On 11 December 2024, the Paris Local Division revoked the patent entirely with effect in the territories of the Contracting Member States for which it had effect, dismissed all of DexCom's infringement claims, and required DexCom to bear the costs of the proceedings.
DexCom appealed the decision, limiting the appeal to the counterclaim for revocation and withdrawing its infringement action. On 8 January 2025, the Abbott companies applied to withdraw their counterclaim for revocation. On 9 January 2025, DexCom consented to this withdrawal, arguing that since the revocation counterclaim was withdrawn, the impugned decision revoking the patent loses its effect, and the patent as granted should be considered in force in all designated territories. Both parties requested that the impugned decision be set aside and the proceedings be declared closed.
Regarding costs, both parties indicated that a cost decision was not requested, though DexCom noted that if the Court deemed it necessary under R. 265.2(c) RoP, each party should bear its own costs. DexCom also applied for reimbursement of 60% of the court fees it paid with the Statement of appeal, amounting to 12,000 EUR, pursuant to R. 370.9(b)(i) RoP.
The Court of Appeal held that the application to withdraw the counterclaim for revocation was admissible since there was no final decision in the action due to the pending appeal, and the Court of Appeal was responsible for deciding on the permissibility of the withdrawal application. Given the parties' mutual consent, they could not be considered to have a legitimate interest in having the actions decided by the Court, and the withdrawals were permitted. The Court noted that with the closure of the proceedings, the impugned order would become ineffective.
On costs, the Court found that no cost decision was required since both parties declared one was not requested. Regarding reimbursement of court fees, the Court applied R. 370.9(b)(i) RoP, which provides for a 60% refund of court fees when an action is withdrawn before written proceedings have been concluded, and ordered the reimbursement as requested.
The Court of Appeal permitted the withdrawal of both the infringement action and the counterclaim for revocation, declared the proceedings closed, ordered the decision to be entered on the Register, declared no need for a cost decision, and ordered that 60% of the appeal court fees be refunded to DexCom.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Luxembourg (LU). Understanding the court's reasoning in DexCom, Inc. vs Abbott Laboratories and Others is valuable context for structuring arguments or assessing risk in similar proceedings.
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