Roche settles UPC dispute over insulin distribution technology

Roche Diagnostics has now resolved its UPC dispute with Tandem Diabetes Care, VitalAire and other defendants with a settlement. The case was playing out in Hamburg, Düsseldorf and Paris.

Since late 2023, the parties have been embroiled in a battle over two Roche-owned patents. EP 2 196 231 B1 relates to a “system for ambulatory drug infusion comprising a filling apparatus for flexible containers”. EP 1 970 677 B1 protects an “intravenous infusion system with dosing device”. Both are used in dosing pumps for administering insulin to diabetics.

In November 2023, Tandem Diabetes Care brought an action for declaration of non-infringement and revocation action against Roche Diabetes Care before the Paris central division. The med-tech company challenged the validity of EP 231 on grounds of added matter, lack of novelty and lack of inventive step.

Then, in early 2024, Roche Diabetes Care filed an infringement suit against Tandem and VitalAire at the Hamburg local division. VitalAire countered with a revocation claim.

In December 2024, the panel of the Paris central division under presiding judge Paolo Catallozzi dismissed the revocation action filed by Tandem and upheld Roche Diabetes Care’s EP 231 as granted. An appeal against this decision was pending at the Court of Appeal in Luxembourg.

Parallel to this dispute, Roche Diabetes Care filed an infringement claim at the Düsseldorf local division over EP 677 against Tandem Diabetes Care, VitalAire, Air Liquide Healthcare, Dinno Santé and Rubin Medical (Diatom). In this case, too, he defendants filed counterclaims for revocation.

According to an order of the Düsseldorf local division, the parties have now settled (case ID: UPC_CFI_504/2023). The details of the settlement are not known. However, according to JUVE Patent sources, this also affects the disputes in Hamburg and the appeal against the ruling of the Paris central division.

Kather Augenstein for Roche
In all proceedings, patent owner Roche relied on Kather Augenstein. The Düsseldorf-based IP boutique is one of the most active representatives at the UPC, with lead partner Christof Augenstein having worked on several cases. For example, he led the team representing Panasonic in the high-profile cases against Xiaomi and Oppo until the parties settled last December. He has recently taken over the representation of Fujifilm in the appeal proceedings against Kodak.

The team received technical advice from patent attorney Thomas Kronberger of Grünecker. The mixed firm regularly acts in filing and prosecution for various Roche subsidiaries, including Roche Diabetes Care.

Taylor Wessing, Hoyng ROKH et al
The defendants Tandem Diabetes Care and Rubin Medical Care instructed an international team from Taylor Wessing. Dutch partners Charlotte Garnitsch and Wim Maas took the lead, cooperating with Düsseldorf-based partners Roland Küppers and Alexander Rubusch. Associates Iris van der Heijdt and Pauline Springorum from the Amsterdam office and Eugen Reismann from Düsseldorf assisted. The international law firm is also among the most active at the UPC. Parts of the cross-border team around Wim Maas and Roland Küppers also acted in another major med-tech dispute for Abbott against SiBio.

Patrick van Ginneken of Dutch patent attorney firm AOMB provided support in technical matters. The firm regularly cooperates with Taylor Wessing, such as in the Abbott vs SiBio case.

Christof Augenstein
Christof Augenstein
Charlotte Garnitsch
Charlotte Garnitsch
Konstantin Schallmoser
Konstantin Schallmoser
Christine Kanz, Hoyng ROKH Monegier, patent litigation
Christine Kanz
For the ongoing proceedings Tandem brought in a team from Bonabry. Partners Konstantin Schallmoser, Alexander Harguth, and Carl-Alexander Dinges led the appeal against the Paris nullity action, for example. The team spun off from Preu Bohlig in early 2025. The firm established contact with the client at a conference on the UPC in the US. Counsel Christian Holtz and associate Christian Kube, who recently joined the team, provided support.

Hoyng ROKH Monégier represented the defendant Air Liquide Healthcare and its subsidiaries VitalAire and Dinno Santé. Air Liquide is a long-standing client of the firm, originating from contacts of Hoyng ROKH Monegier’s Paris office. Düsseldorf-based partner Christine Kanz took the lead, cooperating with patent attorney and counsel Tung-Gia Du, with associate Ling-Ling Dorsch providing support. The mixed international IP firm is also often seen at the UPC and recently represented Hurom in a dispute with NUC over juicers.