{"id":5326,"date":"2024-07-15T11:03:00","date_gmt":"2024-07-15T11:03:00","guid":{"rendered":"https:\/\/forresters-ip.com\/abbott-vs-sibio\/"},"modified":"2025-11-28T13:47:54","modified_gmt":"2025-11-28T13:47:54","slug":"abbott-vs-sibio","status":"publish","type":"post","link":"https:\/\/forresters-ip.com\/de\/abbott-vs-sibio\/","title":{"rendered":"Abbott vs. SiBio: the trilogy of preliminary injunction decisions before the UPC"},"content":{"rendered":"\n<p class=\"wp-block-paragraph\">Abbott Diabetes Care Inc. brought proceedings against SiBio Technology Limited before the UPC, asking the court to order a preliminary injunction with respect to three different patents \u2013 the result? Three different outcomes.<\/p>\n\n\n\n<h3 class=\"wp-block-heading\">Background<\/h3>\n\n\n\n<p class=\"wp-block-paragraph\">Abbott Diabetes Care Inc. (\u201cAbbott\u201d) has been a developer, manufacturer and vendor of continuous glucose monitoring (\u201cCGM\u201d) devices since 2007, and has been the leading supplier of CGM devices in Europe, distributing CGM devices to over 1.3 million patients. Abbott has a portfolio of patents directed to various technologies related to its CGM products.<\/p>\n\n\n\n<p class=\"wp-block-paragraph\">SiBio Technology Limited (\u201cSiBio\u201d) manufactures CGM devices, and has been selling their products in China since 2021. SiBio has recently entered the EU market using an importer, and co-defendant in all three cases, Umedwings Netherlands B.V. (\u201cUmedwings\u201d).<\/p>\n\n\n\n<h3 class=\"wp-block-heading\">Decision one \u2013 UPC_CFI_130\/2024<\/h3>\n\n\n\n<p class=\"wp-block-paragraph\">Abbott is the proprietor of EP2713879 (\u201cEP879\u201d), which is currently in force in Germany, France, The Netherlands and Ireland (among other non-contracting member states). The patent was opted out of the competence of the UPC, however this opt-out was withdrawn six days before the application leading to this decision was filed, thereby enabling Abbott to use the UPC to bring proceedings against SiBio rather than separate national proceedings.<\/p>\n\n\n\n<p class=\"wp-block-paragraph\">Abbott lodged an application for a preliminary injunction (PI) and other provisional measures on 20 March 2024 at the UPC Local Division The Hague. In April 2024, the defendants lodged an objection to Abbott\u2019s application. During May 2024, each party submitted written arguments, with an oral hearing then scheduled on 22 May 2024.<\/p>\n\n\n\n<p class=\"wp-block-paragraph\">In the hearing, Abbott contended that the defendants infringed at least claims 1 and 4 of EP879 by offering a CGM device for sale on SiBio\u2019s Europe-facing website, and requested that the court:<\/p>\n\n\n\n<ul class=\"wp-block-list\">\n<li>grant a PI with immediate effect to stop the defendants making, offering, putting on the market, importing, or storing their CGM device;<\/li>\n\n\n\n<li>order the defendants to, within four weeks of the order, disclose: the origin and distribution channels of the CGM device; the quantities delivered, received and ordered, as well as the price obtained for the devices; the identity of any third party involved in the production or distribution of the CGM devices;<\/li>\n\n\n\n<li>order the defendants to deliver up any stock of the allegedly infringing CGM devices;<\/li>\n\n\n\n<li>order the defendants to pay up to EUR 250,000 for each violation of (i) \u2013 (iii), plus up to EUR 100,000 per day that the violation continues;<\/li>\n\n\n\n<li>append an order for the enforcement to its decision; and<\/li>\n\n\n\n<li>order the defendants to bear Abbott\u2019s costs.<\/li>\n<\/ul>\n\n\n\n<p class=\"wp-block-paragraph\">Interestingly, SiBio did not challenge the validity of EP879 nor the alleged infringement. SiBio\u2019s defence comprised a cease-and-desist declaration from 15 May 2024, one week before the hearing, and the assertion that Abbott\u2019s application was therefore devoid of purpose and that it should be disposed of.<\/p>\n\n\n\n<p class=\"wp-block-paragraph\">SiBio further argued that Abbott should pay for incurred costs due to not sending a warning letter before initiating proceedings, thereby causing SiBio to incur unnecessary costs.<\/p>\n\n\n\n<p class=\"wp-block-paragraph\">To counter SiBio\u2019s defence, Abbott stated that an infringing device was purchased two days after the cease-and desist declaration, and so SiBio had therefore breached its declaration, and so an order of the court was required. This was not disputed by SiBio.<\/p>\n\n\n\n<p class=\"wp-block-paragraph\">The court, after considering the arguments of both sides, decided to partly allow the order sought. The court decided on the requests as follows:<\/p>\n\n\n\n<ul class=\"wp-block-list\">\n<li>allowed, but limited to the CGM device at issue;<\/li>\n\n\n\n<li>denied due to SiBio\u2019s cease-and-desist declaration already making Abbott aware of the details requested;<\/li>\n\n\n\n<li>allowed;<\/li>\n\n\n\n<li>amended by the court to order the defendants to pay up to EUR 10,000 for each violation, or up to EUR 100,000 for each day that violations continue,<\/li>\n\n\n\n<li>allowed; and<\/li>\n\n\n\n<li>partially allowed in that the defendants, as the losing party, would bear Abbott\u2019s court fees of EUR 11,000.<\/li>\n<\/ul>\n\n\n\n<h3 class=\"wp-block-heading\">Decision two \u2013 UPC_CFI_131\/2024<\/h3>\n\n\n\n<p class=\"wp-block-paragraph\">Abbott is also the proprietor of EP3831283 (\u201cEP283\u201d), which was in force in 15 member states of the UPC, as well as other non-member states. Identical opt-out and withdrawal tactics were used to that relating to EP879 above. The lodging of an application for provisional measures at the UPC Local Division The Hague, as well as the order sought, were also very similar to that of EP879.<\/p>\n\n\n\n<p class=\"wp-block-paragraph\">In the hearing, Abbott contended that the defendants infringed at least claims 1, 6, 7, 9, 11-14 and 26 of EP283 by offering a CGM device for sale on SiBio\u2019s Europe-facing website.<\/p>\n\n\n\n<p class=\"wp-block-paragraph\">SiBio\u2019s defence this time was much more robust and included (i) an argument that the court is not competent for Ireland, (ii) an assertion that EP283 is likely invalid due to added matter, lack of novelty, and lack of inventive step, (iii) a contention that the application was brought with unreasonable delay, and (iv) a request that Abbott pay the fees and costs due to Abbott not sending a warning letter before initiating proceedings.<\/p>\n\n\n\n<h3 class=\"wp-block-heading\">Competency relating to Ireland<\/h3>\n\n\n\n<p class=\"wp-block-paragraph\">The UPC is competent to hear the case for the contracting member states. However, after SiBio\u2019s defence, Abbott indicated that Ireland was included by mistake and so there is no need for the court to decide on competence relating to Ireland.<\/p>\n\n\n\n<h3 class=\"wp-block-heading\">Validity of EP283<\/h3>\n\n\n\n<p class=\"wp-block-paragraph\">The applicant may be invited by the court to provide reasonable evidence to show that it is more likely than not that the defendants are infringing the patent at issue.<\/p>\n\n\n\n<p class=\"wp-block-paragraph\">The opposite is also true, in that if the defendant asserts that the patent at issue is invalid, they may be invited by the court to provide evidence to demonstrate that it is more likely than not that the patent at issue is invalid.<\/p>\n\n\n\n<p class=\"wp-block-paragraph\">First, the court considered the issue of added subject matter. Both sides relied on case law of the EPO\u2019s Boards of Appeal when substantiating their arguments regarding added matter, and as neither party indicated whether and how the court should apply a different standard, the EPO\u2019s \u201cgold standard\u201d disclosure test was applied by the court. In applying the test that any amendments are only allowable should they be within the limits of what a skilled person would derive directly and unambiguously from the application as originally filed, the court found that it was more likely than not that EP283 would be held as invalid due to intermediate generalisation.<\/p>\n\n\n\n<p class=\"wp-block-paragraph\">The court saw no need to decide on the likely novelty and inventive step of EP283 due to likely invalidity due to added subject matter.<\/p>\n\n\n\n<h3 class=\"wp-block-heading\">Decision of the court<\/h3>\n\n\n\n<p class=\"wp-block-paragraph\">The court therefore denied Abbott\u2019s application for preliminary measures, ordered that Abbott bear reasonable and proportionate costs of the defendants, and set the value of the dispute at EUR 4,000,000.<\/p>\n\n\n\n<h3 class=\"wp-block-heading\">Decision three \u2013 UPC_CFI_133\/2024<\/h3>\n\n\n\n<p class=\"wp-block-paragraph\">Abbott is also the proprietor of EP2393417 (\u201cEP417\u201d). Again, a strategy of opting out of UPC competence and then withdrawal before bringing proceedings was employed. This time, Abbott sought an order from UPC Local Division D\u00fcsseldorf.<\/p>\n\n\n\n<p class=\"wp-block-paragraph\">On 3 July 2024, the court issued a decision confirming that the parties had reached a settlement. In the settlement, published in the decision, the defendants agreed to,&nbsp;<em>inter alia<\/em>:<\/p>\n\n\n\n<ul class=\"wp-block-list\">\n<li>refrain from offering, placing onto the market or possessing the CGM device in Germany, France and The Netherlands;<\/li>\n\n\n\n<li>pay a penalty for each violation of (i);<\/li>\n\n\n\n<li>provide, within one week of the agreement: the origin and distribution channels of the product; quantities delivered, received or ordered, as well as the prices obtained; the identity of any third party in the production or commercial distribution of the product;<\/li>\n\n\n\n<li>destroy the products held in the states concerned;<\/li>\n\n\n\n<li>recall all stocks from those same countries;<\/li>\n\n\n\n<li>compensate Abbott for damages; and<\/li>\n\n\n\n<li>confirm the agreement in a decision which shall be enforceable as a final decision.<\/li>\n<\/ul>\n\n\n\n<h3 class=\"wp-block-heading\">Take away points<\/h3>\n\n\n\n<p class=\"wp-block-paragraph\">The decisions taken by the courts are believed to be sensible and pragmatic to both sides. In decision one, the court noted that the defendants both signed a cease-and-desist order and declared that their product no longer appeared on the market in the states concerned, and so there is no reason why a PI would unduly affect them.<\/p>\n\n\n\n<p class=\"wp-block-paragraph\">In decision two, the court decided to deny the PI based on the likelihood that the patent contested was invalid \u2013 something that was not contested with regard to decision one.<\/p>\n\n\n\n<p class=\"wp-block-paragraph\">The decisions do in many ways, however, ask more questions than they answer. One has to wonder how far reaching the decisions of the UPC will be in terms of states which have signed but not yet ratified the Agreement on a Unified Patent Court. For example, Ireland was included in the order of decision one, but would not have been included in decision two, even if the preliminary measures had been granted.<\/p>\n\n\n\n<p class=\"wp-block-paragraph\">A further question arises; is it possible that the UPC may consider other methods of assessing added matter objections, and by extension, inventive step, should a party argue that an approach other than the EPO\u2019s is relevant?<\/p>\n\n\n\n<p class=\"wp-block-paragraph\">Such questions are considered to be a major reason for many applicants deciding to remove their patents from the competence of the UPC and then withdrawing the opt-out to enforce the patent if and when required.<\/p>\n","protected":false},"excerpt":{"rendered":"<p>Abbott Diabetes Care Inc. brought proceedings against SiBio Technology Limited before the UPC, asking the court to order a preliminary injunction with respect to three different patents \u2013 the result? Three different outcomes. Background Abbott Diabetes Care Inc. (\u201cAbbott\u201d) has been a developer, manufacturer and vendor of continuous glucose monitoring (\u201cCGM\u201d) devices since 2007, and [&hellip;]<\/p>\n","protected":false},"author":6,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"_acf_changed":false,"footnotes":""},"categories":[352],"tags":[432],"class_list":["post-5326","post","type-post","status-publish","format-standard","hentry","category-upc-de","tag-unified-patent-court-de"],"acf":[],"yoast_head":"<!-- This site is optimized with the Yoast SEO plugin v27.5 - https:\/\/yoast.com\/product\/yoast-seo-wordpress\/ -->\n<title>Abbott vs. SiBio: the trilogy of preliminary injunction decisions before the UPC - Forresters<\/title>\n<meta name=\"robots\" content=\"index, follow, max-snippet:-1, max-image-preview:large, max-video-preview:-1\" \/>\n<link rel=\"canonical\" href=\"https:\/\/forresters-ip.com\/de\/abbott-vs-sibio\/\" \/>\n<meta property=\"og:locale\" content=\"de_DE\" \/>\n<meta property=\"og:type\" content=\"article\" \/>\n<meta property=\"og:title\" content=\"Abbott vs. SiBio: the trilogy of preliminary injunction decisions before the UPC - Forresters\" \/>\n<meta property=\"og:description\" content=\"Abbott Diabetes Care Inc. brought proceedings against SiBio Technology Limited before the UPC, asking the court to order a preliminary injunction with respect to three different patents \u2013 the result? Three different outcomes. Background Abbott Diabetes Care Inc. (\u201cAbbott\u201d) has been a developer, manufacturer and vendor of continuous glucose monitoring (\u201cCGM\u201d) devices since 2007, and [&hellip;]\" \/>\n<meta property=\"og:url\" content=\"https:\/\/forresters-ip.com\/de\/abbott-vs-sibio\/\" \/>\n<meta property=\"og:site_name\" content=\"Forresters\" \/>\n<meta property=\"article:published_time\" content=\"2024-07-15T11:03:00+00:00\" \/>\n<meta property=\"article:modified_time\" content=\"2025-11-28T13:47:54+00:00\" \/>\n<meta name=\"author\" content=\"Aisling Maciver\" \/>\n<meta name=\"twitter:card\" content=\"summary_large_image\" \/>\n<meta name=\"twitter:label1\" content=\"Verfasst von\" \/>\n\t<meta name=\"twitter:data1\" content=\"Aisling Maciver\" \/>\n\t<meta name=\"twitter:label2\" content=\"Gesch\u00e4tzte Lesezeit\" \/>\n\t<meta name=\"twitter:data2\" content=\"7\u00a0Minuten\" \/>\n<script type=\"application\/ld+json\" class=\"yoast-schema-graph\">{\"@context\":\"https:\\\/\\\/schema.org\",\"@graph\":[{\"@type\":\"Article\",\"@id\":\"https:\\\/\\\/forresters-ip.com\\\/de\\\/abbott-vs-sibio\\\/#article\",\"isPartOf\":{\"@id\":\"https:\\\/\\\/forresters-ip.com\\\/de\\\/abbott-vs-sibio\\\/\"},\"author\":{\"name\":\"Aisling Maciver\",\"@id\":\"https:\\\/\\\/forresters-ip.com\\\/de\\\/#\\\/schema\\\/person\\\/3ac241e1ff5bd869271ac40c8e55bad9\"},\"headline\":\"Abbott vs. SiBio: the trilogy of preliminary injunction decisions before the UPC\",\"datePublished\":\"2024-07-15T11:03:00+00:00\",\"dateModified\":\"2025-11-28T13:47:54+00:00\",\"mainEntityOfPage\":{\"@id\":\"https:\\\/\\\/forresters-ip.com\\\/de\\\/abbott-vs-sibio\\\/\"},\"wordCount\":1500,\"keywords\":[\"UPC\"],\"articleSection\":[\"EPG\"],\"inLanguage\":\"de\"},{\"@type\":\"WebPage\",\"@id\":\"https:\\\/\\\/forresters-ip.com\\\/de\\\/abbott-vs-sibio\\\/\",\"url\":\"https:\\\/\\\/forresters-ip.com\\\/de\\\/abbott-vs-sibio\\\/\",\"name\":\"Abbott vs. SiBio: the trilogy of preliminary injunction decisions before the UPC - Forresters\",\"isPartOf\":{\"@id\":\"https:\\\/\\\/forresters-ip.com\\\/de\\\/#website\"},\"datePublished\":\"2024-07-15T11:03:00+00:00\",\"dateModified\":\"2025-11-28T13:47:54+00:00\",\"author\":{\"@id\":\"https:\\\/\\\/forresters-ip.com\\\/de\\\/#\\\/schema\\\/person\\\/3ac241e1ff5bd869271ac40c8e55bad9\"},\"breadcrumb\":{\"@id\":\"https:\\\/\\\/forresters-ip.com\\\/de\\\/abbott-vs-sibio\\\/#breadcrumb\"},\"inLanguage\":\"de\",\"potentialAction\":[{\"@type\":\"ReadAction\",\"target\":[\"https:\\\/\\\/forresters-ip.com\\\/de\\\/abbott-vs-sibio\\\/\"]}]},{\"@type\":\"BreadcrumbList\",\"@id\":\"https:\\\/\\\/forresters-ip.com\\\/de\\\/abbott-vs-sibio\\\/#breadcrumb\",\"itemListElement\":[{\"@type\":\"ListItem\",\"position\":1,\"name\":\"Home\",\"item\":\"https:\\\/\\\/forresters-ip.com\\\/de\\\/\"},{\"@type\":\"ListItem\",\"position\":2,\"name\":\"Abbott vs. SiBio: the trilogy of preliminary injunction decisions before the UPC\"}]},{\"@type\":\"WebSite\",\"@id\":\"https:\\\/\\\/forresters-ip.com\\\/de\\\/#website\",\"url\":\"https:\\\/\\\/forresters-ip.com\\\/de\\\/\",\"name\":\"Forresters\",\"description\":\"Clear Direction\",\"potentialAction\":[{\"@type\":\"SearchAction\",\"target\":{\"@type\":\"EntryPoint\",\"urlTemplate\":\"https:\\\/\\\/forresters-ip.com\\\/de\\\/?s={search_term_string}\"},\"query-input\":{\"@type\":\"PropertyValueSpecification\",\"valueRequired\":true,\"valueName\":\"search_term_string\"}}],\"inLanguage\":\"de\"},{\"@type\":\"Person\",\"@id\":\"https:\\\/\\\/forresters-ip.com\\\/de\\\/#\\\/schema\\\/person\\\/3ac241e1ff5bd869271ac40c8e55bad9\",\"name\":\"Aisling Maciver\",\"image\":{\"@type\":\"ImageObject\",\"inLanguage\":\"de\",\"@id\":\"https:\\\/\\\/secure.gravatar.com\\\/avatar\\\/c2486cbe56bf8936abf04521a29cd624d8e0456096ff0befc254a40bee0deef5?s=96&d=mm&r=g\",\"url\":\"https:\\\/\\\/secure.gravatar.com\\\/avatar\\\/c2486cbe56bf8936abf04521a29cd624d8e0456096ff0befc254a40bee0deef5?s=96&d=mm&r=g\",\"contentUrl\":\"https:\\\/\\\/secure.gravatar.com\\\/avatar\\\/c2486cbe56bf8936abf04521a29cd624d8e0456096ff0befc254a40bee0deef5?s=96&d=mm&r=g\",\"caption\":\"Aisling Maciver\"},\"url\":\"https:\\\/\\\/forresters-ip.com\\\/de\\\/author\\\/aisling-m\\\/\"}]}<\/script>\n<!-- \/ Yoast SEO plugin. -->","yoast_head_json":{"title":"Abbott vs. SiBio: the trilogy of preliminary injunction decisions before the UPC - Forresters","robots":{"index":"index","follow":"follow","max-snippet":"max-snippet:-1","max-image-preview":"max-image-preview:large","max-video-preview":"max-video-preview:-1"},"canonical":"https:\/\/forresters-ip.com\/de\/abbott-vs-sibio\/","og_locale":"de_DE","og_type":"article","og_title":"Abbott vs. SiBio: the trilogy of preliminary injunction decisions before the UPC - Forresters","og_description":"Abbott Diabetes Care Inc. brought proceedings against SiBio Technology Limited before the UPC, asking the court to order a preliminary injunction with respect to three different patents \u2013 the result? 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