Dexcom Inc v. Abbott Diabetes Care Inc

1. Case Identification

• Case #: IPR2023-01252
• Patent #: 11,298,056
• Filed: August 1, 2023
• Petitioner(s): Dexcom, Inc.
• Patent Owner(s): Abbott Diabetes Care Inc.
• Challenged Claims: 1-30

2. Patent Overview

• Title: Methods and Systems for Early Signal Attenuation Detection and Processing
• Brief Description: The ’056 patent discloses a continuous glucose monitoring system designed to handle "adverse conditions" (e.g., malfunctions) that cause gaps in displayed glucose data. The system detects such conditions, and upon correction, backfills the data gap by retrospectively processing sensor data from the malfunction period.

3. Grounds for Unpatentability

Ground 1: Claims 1-21 and 23-30 are obvious over Harper 2019.

• Prior Art Relied Upon: Harper (Application # 2019/0216373).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Harper, which is the published grandparent application of the ’056 patent, discloses or suggests an embodiment of nearly every component and function of the challenged claims. This includes a glucose sensor, a data processing and transmitter unit, and a receiver unit configured to display glucose data graphs. Harper explicitly describes displaying a data gap during a period of unsuccessful calibration and subsequently backfilling that gap with processed sensor data, as depicted in its Figures 7A and 7B.
  • Motivation to Combine (for §103 grounds): This ground relied on a single reference. Petitioner’s core assertion was that Harper is valid prior art under 35 U.S.C. §102(a)(1) because the ’056 patent is not entitled to its grandparent’s filing date due to a lack of written description and enablement support (as detailed in Section 5).
  • Expectation of Success (for §103 grounds): As a single-reference ground, Petitioner argued that Harper itself provides all necessary elements to render the claims obvious.

Ground 2: Claim 22 is obvious over [Harper 2019](https://ai-lab.exparte.com/case/ptab/IPR2023-01252/doc/1208) in view of [Taub/Harper 2012](https://ai-lab.exparte.com/case/ptab/IPR2023-01252/doc/1209), [Hayter/Taub 2013](https://ai-lab.exparte.com/case/ptab/IPR2023-01252/doc/1210), and [He/Taub 2014](https://ai-lab.exparte.com/case/ptab/IPR2023-01252/doc/1211).

• Prior Art Relied Upon: Harper (Application # 2019/0216373), Taub/Harper (Application # 2012/0108931), Hayter/Taub (Application # 2013/0127627), and He/Taub (Application # 2014/0176338).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground specifically addressed claim 22, which requires the receiver unit to be a mobile phone. Petitioner argued that Harper does not disclose this element for a full-featured receiver. He/Taub was cited for its explicit disclosure that a receiver unit may include a mobile phone. Additionally, Petitioner asserted that Harper lacks a sufficient disclosure for continuously monitoring for a wide range of adverse conditions. Hayter/Taub was cited to supply this teaching, as it describes frequent, periodic self-tests and functionality checks to detect system malfunctions. Finally, Taub/Harper was cited for teaching the processing of sensor data using calibration data within the transmitter unit itself.
  • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine these references because they are all closely related patent applications from the same Patent Owner, involving overlapping inventors, and addressing the same field of continuous glucose monitoring. Petitioner contended that a POSITA seeking to implement the aspirations of Harper (e.g., robust error handling) would naturally look to these related publications for known techniques. Specifically, the ubiquity and desirability of mobile phones for displaying medical data by the patent’s effective filing date would motivate incorporating He/Taub’s teaching.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success, as the combination involved applying known monitoring techniques (Hayter/Taub) and a conventional user interface (He/Taub's mobile phone) to the system described in Harper.

4. Key Claim Construction Positions

• "adverse condition": Petitioner argued that the full scope of this term must be construed to encompass all 17 distinct categories of errors and malfunctions identified in the specification and recited in the various dependent claims. These range from "sensor communication error" (claim 3) and "calibration failure condition" (claim 10) to "early signal attenuation condition." This broad construction was central to Petitioner's argument that the grandparent application failed to provide adequate written description for the full scope of the invention.

5. Key Technical Contentions (Beyond Claim Construction)

• Lack of Priority Claim Entitlement: The central contention of the petition was that the ’056 patent is not entitled to claim priority to its 2018 grandparent application. Petitioner argued the grandparent application lacked the necessary written description and enablement support under 35 U.S.C. §112 for the full scope of the challenged claims. Key deficiencies alleged in the grandparent application included failing to describe or enable how to:
  • Continuously monitor for and detect the start and stop times of all 17 "adverse conditions."
  • Retrospectively calculate and display accurate glucose values for a prolonged adverse-condition period when only inaccurate calibrated data (or no raw sensor data at all) was stored.
  • Implement the full-featured receiver unit functions on a mobile phone.
• Intervening Prior Art: Because the ’056 patent allegedly lacks §112 support in its grandparent application, Petitioner contended its effective filing date is no earlier than its parent application's filing date of April 30, 2021. This would make the July 18, 2019 publication of the grandparent application ("Harper 2019") valid intervening prior art against the challenged claims.

6. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d), asserting that neither the same nor substantially the same prior art or arguments were previously presented to the USPTO. Specifically, the examiner never addressed whether the claims lacked §112 support in the grandparent application and therefore never considered Harper 2019 or the other references as prior art.

7. Relief Requested

• Petitioner requested the institution of an inter partes review (IPR) and the cancellation of claims 1-30 of the ’056 patent as unpatentable.