The UPC has spoken: jurisdiction can be carved-out in infringement disputes but not in validity challenges

Is the first decision on the merits delivered by the Paris Local Division

The UPC Paris Local Division (LD) issued a decision on the merits (UPC_CFI_230/2023) in  4 July 2024 as part of the ongoing global litigation between DEXCOM and ABBOTT. On 7 July 2023, DEXCOM brought an infringement action against ABBOTT before the UPC concerning European patent EP 3 435 866, and ABBOTT reacted by filing a counterclaim for revocation. That infringement action however did not cover infringement acts based on the German part of the part, which had been specifically excluded from the action (carved-out) by DEXCOM.

Before that date, parallel infringement and nullity proceedings had already started in Germany between the same parties, concerning the national part of the same European patent. Thus, one of the relevant questions at issue was whether the UPC, as court second seised, should hear the case, decline its jurisdiction in favour of German courts, or stay proceedings in reference to the counterclaim for revocation for the German part of the patent.

Interestingly enough, the Paris LD considered that no identify of parties and subject matter existed between the national and German proceedings, since the national revocation action in Germany concerned only the German part of the patent and only one defendant out of the ten involved in the UPC litigation. However, the Paris LD concluded that that those parallel proceedings indeed were “related actions”, in which case it was at the UPC’s discretion to decide whether to decline jurisdiction or not. Then, for the sake of efficiency, the LD decided to maintain their jurisdiction to rule on the validity of the entire EP, including the German part. In addition to this, the Paris LD also clarified that there is not any UPC-binding legal basis which allows the application of the principle of carve out to territorially restrict a counterclaim for revocation.

In line with this, the decision on the merits now issued by the Paris LD confirms that the European patent, which has been found invalid, is to be entirely revoked without being bound to the territorial scope limitation requested by DEXCOM in their infringement claim, thus also being revoked in Germany.