Paris Local Division issues the second full UPC decision and applies the Brussels Regulation to maintain maximum jurisdiction

The Paris Local Division of the UPC issued its first full ruling on 4 July 2024, DexCom Inc v Abbott Labs  (and nine others), the second UPC full ruling ever, after the Dusseldorf Local Division issued the first full ruling (and injunction) the day before (see our post here).

DexCom had brought an infringement action against Abbott Labs Inc, Abbot Diabetes Care and eight other Abbott parties (from Belgium, Netherlands, Italy, Sweden and Germany) in relation to its patent for an analyte monitoring system about which the parties are involved in litigation worldwide.  The UPC held the patent invalid (it survived an added matter and novelty attack but arguments on lack of inventive step arguments succeeded and auxiliary requests by DexCom on amendment were not found to make it valid either).

However, there were some interesting jurisdictional points that arose. DexCom had already brought national proceedings in Germany in relation to the same patent prior to the start of the UPC. The Paris court considered whether the lis pendens  or "related actions" provisions of the Brussels Regulation applied, and if the latter applied, whether the UPC would exercise that discretion to decline jurisdiction in favour of the court first seized.

In summary:

• There were already infringement and revocation proceedings in the German national courts in relation to the patent and some of the parties involved in this UPC action, which national proceedings had started before the UPC commenced. The infringement proceedings were on-going against three of the Abbott defendants, one of which had also brought the revocation action.  DexCom had sought to carve out the German infringement proceedings from the UPC action. It also claimed that there should be no counterclaim for revocation in respect of the DE designation since this was not asserted against the defendants.
• The UPC held that the Brussels Regulation (BR) applied directly, even though the national proceedings were pre-UPC. Abbott had argued that Art 71c BR meant that only proceedings started in national courts in the transitional period would be relevant, but the UPC did not agree.
• However, the UPC held that since not all the parties involved in the UPC proceedings were involved in the German national revocation proceedings, this was not a lis pendens situation (same party; same patent – Art 29 BR) where they would have been obligated to recognise the jurisdiction of the court first seized, but it was a "related actions" situation (Art 30(2) BR), by virtue of which the court has discretion as to whether or not to cede jurisdiction to the court first seized. The UPC decided to exercise its discretion to maintain its jurisdiction, as it concluded that the German national court would not be able to make its decision as quickly as the UPC would, the German court having set an oral hearing date for January 2025, and that this would be in the interest of the proper administration of justice.

• The UPC also held that revocation of the German designation could not (de facto) be excluded from the jurisdiction of the UPC, unlike the situation for parallel infringement proceedings where this was possible. BR rules could apply to exclude it, but this was not their impact here; "The scope of the dispute brought before the Court is incontestably governed by the principle that the parties define the subject-matter of the dispute, a general principle of law which is reiterated in Art. 76(1) of the UPC Agreement and which, moreover, allows the claimant in the main action to exclude certain acts of infringement in order to avoid the inconvenience of parallel jurisdictions between the UPC and national courts during the transitional period provided for in Art. 83 of the Agreement ("carve out"). However, this principle cannot restrict a defendant in its challenge to the validity of the European patent which is being asserted against it since no legal text that is binding upon UPC law expressly states such a restriction".