Abbott Diabetes Care Inc. & Ors v Dexcom Incorporated & Ors

Patent obviousness must be assessed against the claim as properly construed, using a fact-specific inquiry without hindsight. A structured Pozzoli analysis is useful but non-mandatory. Where a claim distinguishes an introducer needle being coupled to the housing from a bias mechanism being operatively coupled for automatic retraction, the former may confine the claim to manual insertion. A finding of obviousness based on automatic insertion cannot stand if it contradicts that construction and no evidence supports obviousness on the narrower claim. On an unopposed patent-revocation appeal, the Comptroller may assist objectively in the public interest, but cannot serve a respondent’s notice unless made a party.

Abbott appealed against Mellor J’s order revoking its patent for an integrated physiological monitoring device on the ground of obviousness over Heller. The judge’s decision is reported at [2024] EWHC 1664 (Pat). Abbott had settled with Dexcom, but sought to overturn the revocation order. The Comptroller attended to assist the Court of Appeal.

The judge had construed claim 1 as requiring manual insertion, but held the claim obvious over a combination of Heller’s integrated sensor-and-electronics configuration and its insertion-gun configuration, which used automatic insertion. The appeal concerned the proper starting point, the identification of the relevant housing, the meaning of the coupling requirement, and whether the evidence established obviousness on the claim as construed.

1. Appeal allowed. Arnold LJ gave the leading judgment, with Cobb and Lewison LJJ agreeing. Paragraph 5 of the order revoking the patent was set aside. The conclusion was based on the judge’s construction of claim 1 and the evidence actually adduced on obviousness over Heller.
2. The judge’s construction of claim 1 was not challenged. In context, coupled to the housing in integer 1.9 required the needle and housing to move together, with movement of the housing causing insertion. The claim was therefore limited to manual insertion. By contrast, operatively coupled in integer 1.10 concerned the bias mechanism’s ability to cause automatic retraction.
3. The judge was entitled to start with Heller’s integrated Figure 32 configuration and consider combining it with the Figure 33 insertion gun. Grounds 1 and 2 therefore failed. However, the judge confused the housing of the sensor-electronics assembly with the housing of the insertion device, and then held that an automatically inserting device satisfied integers 1.7 to 1.10. That conclusion was inconsistent with the claim construction.
4. The evidence of Mr Varde focused on automatic insertion. There was no evidence supporting the alternative case that the skilled team would modify Figure 33 by substituting manual insertion. Nor was there evidence of motivation for that apparently retrograde step, particularly since none of the prior art devices used manual insertion with automatic retraction. The finding that claim 1 was obvious could therefore not stand. It was unnecessary to decide the appeal concerning claims 2 and 3.
5. The Court also held that the delay in delivering judgment was inordinate, although delay alone did not impugn the judgment. On an unopposed revocation appeal, the Comptroller’s role is objective and non-partisan. The Comptroller may assist in defending the judgment below, but cannot serve a respondent’s notice unless joined as a party under the Civil Procedure Rules 1998.

1. Court of Appeal (Civil Division): Appeal allowed and paragraph 5 of the revocation order set aside.
2. High Court of Justice, Patents Court: Mellor J revoked the patent, holding the claims obvious over Heller: [2024] EWHC 1664 (Pat).