United States Court of Appeals 

for the Federal Circuit ______________________ 

DEXCOM, INC.,

Plaintiff-Appellant

v.

ABBOTT DIABETES CARE, INC., ABBOTT 

DIABETES CARE SALES CORPORATION,

Defendants-Appellees

______________________ 

2023-1795

______________________ 

Appeal from the United States District Court for the 

District of Delaware in Nos. 1:21-cv-01699-KAJ, 1:22-cv00605-KAJ, Circuit Judge Kent A. Jordan.

______________________ 

Decided: January 3, 2024 

______________________ 

WILLIAM ADAMS, Quinn Emanuel Urquhart & Sullivan, 

LLP, New York, NY, argued for plaintiff-appellant. Also 

represented by DAVID LEON BILSKER, San Francisco, CA; 

NATHAN HAMSTRA, Chicago, IL; ALEXANDER HALE LOOMIS, 

Boston, MA; VALERIE ANNE LOZANO, I, Los Angeles, CA; 

JOHN W. SHAW, Shaw Keller LLP, Wilmington, DE. 

 JASON M. WILCOX, Kirkland & Ellis LLP, Washington, 

DC, argued for defendants-appellees. Also represented by 

WILLIAM H. BURGESS, JOHN C. O'QUINN; AMANDA J. HOLLIS, 

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2 DEXCOM, INC. v. ABBOTT DIABETES CARE, INC. 

Chicago, IL; BENJAMIN ADAM LASKY, ASHLEY ROSS, New 

York, NY, ELLISEN SHELTON TURNER, Los Angeles, CA. 

 ______________________ 

Before DYK, HUGHES, and STOLL, Circuit Judges. 

STOLL, Circuit Judge. 

This is an interlocutory appeal from a consolidated case 

between Abbott Diabetes Care, Inc. and Abbott Diabetes 

Care Sales Corp. (collectively, “Abbott”) and DexCom, Inc.

in the United States District Court for the District of Delaware. After DexCom sued Abbott for infringing its patents, 

Abbott petitioned for inter partes review of the asserted patents before the Patent Trial and Appeal Board. DexCom 

moved for a preliminary injunction to enjoin Abbott from 

proceeding with the inter partes review proceedings based 

on a forum selection clause in a settlement and license 

agreement between the parties. DexCom appeals the district court’s denial of the preliminary injunction. Because 

the district court did not abuse its discretion in denying the 

preliminary injunction, we affirm.1

1 After oral argument, DexCom moved to voluntarily 

dismiss its appeal under Rule 42(b)(2) of the Federal Rules 

of Appellate Procedure because it contends an injunction is 

“no longer necessary” in light of the Patent Trial and Appeal Board’s final written decisions in the inter partes reviews at issue. Pl.-Appellant’s Mot. Voluntary Dismissal, 

ECF No. 46 at 1. Abbott opposes, contending that the parties continue to dispute whether Abbott breached the settlement and license agreement by filing its IPRs. See ECF 

No. 47.

We deny the motion. DexCom, as the party asserting 

mootness, bears the burden of demonstrating that 

(1) “there is no reasonable expectation that the alleged violation will recur, and (2) interim relief or events have 

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DEXCOM, INC. v. ABBOTT DIABETES CARE, INC. 3

BACKGROUND

DexCom and Abbott are competing manufacturers of 

continuous glucose monitoring systems. In 2014, after 

years of patent litigation, DexCom and Abbott entered into 

a settlement and license agreement (Agreement). The 

Agreement included (1) terms for a cross-license for certain 

patents, J.A. 340 § C; (2) a mutual covenant not to sue during a Covenant Period, J.A. 340–45 § D; (3) a mutual covenant not to Challenge DexCom’s or Abbott’s patents during 

the Covenant Period, J.A. 345–46 § F; and (4) a forum selection clause identifying the U.S. District Court for the 

District of Delaware as the exclusive jurisdiction “over any 

dispute arising from or under or relating to this Agreement, to the extent permitted by law,” J.A. 353 ¶ J.4. It 

defined Challenge to mean: 

with respect to any Party’s patents or patent applications, directly or indirectly, (a) to assert in any 

court or other competent governmental authority 

that such patents or patent applications are invalid 

completely and irrevocably eradicated the effects of the alleged violation.” Los Angeles Cnty. v. Davis, 440 U.S. 625, 

631 (1979) (cleaned up); see also Sumecht NA, Inc. 

v. United States, 923 F.3d 1340, 1345 n.6 (Fed. Cir. 2019) 

(same). DexCom fails to meet this burden because the 

Board’s final written decisions do not “completely and irrevocably eradicate[]” the potential for DexCom to challenge Abbott’s ability to file and participate in inter partes 

reviews in the future. Davis, 440 U.S. at 631. Indeed, the 

parties continue to dispute whether the IPRs were barred 

under the Agreement. For at least these reasons, it is appropriate to deny the motion to dismiss. See, e.g., In re 

Nexium Antitrust Litig., 778 F.3d 1, 1–2 (1st Cir. 2015)

(court’s investment in time, existence of draft opinion, and 

parties’ continued disagreement all support denial of voluntary motion to dismiss following oral argument). 

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4 DEXCOM, INC. v. ABBOTT DIABETES CARE, INC. 

or unenforceable, (b) to seek in any court or other 

competent governmental authority to narrow or 

change the scope of such patents or patent applications, (c) to seek, request, or otherwise take any action that results, or is reasonably expected to result 

in the declaration, initiation or continuation of a 

reexamination, interference or derivation proceeding, opposition, post-grant review or inter partes review of such patents, [or] (d) to submit to any court 

or other competent governmental authority prior 

art, evidence, or arguments adverse to the patentability or validity of any of the other Party’s patents 

or patent applications . . . . 

J.A. 333–34 ¶ A.7 (emphasis added). The Agreement specified the Covenant Period was to expire March 31, 2021. 

J.A. 335 ¶ A.11. Meanwhile, the Agreement was set to end

“the earlier of (i) the date when the last of the Licensed Patents expires or (ii) December 31, 2025.” J.A. 351 ¶ I.1.

After expiration of the Covenant Period, DexCom sued

Abbott in the Western District of Texas, alleging infringement of sixty claims of five of its patents. Abbott moved to 

transfer the case to the District of Delaware, citing the 

Agreement’s forum selection clause. While the motion to 

transfer was pending, Abbott filed a breach-of-contract suit 

against DexCom in Delaware. Among other things, it alleged that DexCom breached the Agreement by suing Abbott on licensed patents and by filing its suit in Texas in 

violation of the forum selection clause. The Western District of Texas court transferred DexCom’s infringement 

suit to Delaware, where it was consolidated with Abbott’s 

breach-of-contract suit. 

In April 2022—ten months after DexCom filed its infringement suit in Texas—Abbott filed eight petitions for 

inter partes review (IPR) of DexCom’s asserted patents. 

DexCom filed preliminary patent owner responses in 

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DEXCOM, INC. v. ABBOTT DIABETES CARE, INC. 5

August 2022, urging the Board not to institute any of the 

IPRs. See, e.g., J.A. 910–92.

Five months later, DexCom answered with a breach-ofcontract counter-counterclaim at the district court, alleging inter alia that Abbott breached the Agreement’s forum 

selection clause by filing IPR petitions. See Abbott Diabetes 

Care, Inc. v. DexCom, Inc., No. 21-1699, 2023 U.S. Dist. 

LEXIS 69298, at *5–6 (D. Del. Apr. 12, 2023) (Decision); see 

also J.A. 320–21 ¶ 358. Prior to this time, DexCom had 

consistently taken the position that the claims of the asserted patents were not licensed, which would render the 

forum selection clause inapplicable. On October 14, 2022, 

Abbott moved to dismiss DexCom’s counter-counterclaim.

Then, on October 25, 2022—six months after Abbott 

filed its IPR petitions—DexCom moved for a preliminary 

injunction, requesting the district court prohibit Abbott 

from proceeding with the IPRs. See J.A. 327–28. After analyzing the appropriate preliminary injunction factors, including whether DexCom “establish[ed] that [it] is likely to 

succeed on the merits, that [it] is likely to suffer irreparable 

harm in the absence of preliminary relief, that the balance 

of equities tips in [its] favor, and that an injunction is in 

the public interest,” the district court denied the preliminary injunction. Decision, 2023 U.S. Dist. LEXIS 69298, 

at *20 n.9, *25–27 (quoting Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 20 (2008)). The court assumed for purposes of the motion that DexCom met the first preliminary 

injunction factor, i.e., that DexCom had shown a likelihood 

of success. Id. at *20–21.

Turning to the second factor—irreparable harm—the

district court found this factor favored denial of an injunction because DexCom actively participated in IPR proceedings for six months before seeking injunctive relief. Id.

at *21–24. The court reasoned that DexCom’s six-month 

delay “negat[es] the idea of irreparability.” Id. at *23 

(quoting Pfizer, Inc. v. Teva Pharms. USA, Inc., 429 F.3d 

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6 DEXCOM, INC. v. ABBOTT DIABETES CARE, INC. 

1364, 1382 (Fed. Cir. 2002)). The court explained that 

“[a]lthough DexCom says the harm it faces stems from the 

PTAB making a validity determination based on a lower 

standard of proof, DexCom obviously knew of that potential 

harm as soon as it learned about Abbott’s IPR petitions, 

and it could have acted accordingly.” Id. at *23. 

The district court found that the third factor—balance 

of hardship—favored denial because DexCom’s inconsistent legal positions (previously arguing that the patents 

were not licensed but now seeking a preliminary injunction 

by asserting that the patents were licensed) and use of Patent Trial and Appeal Board’s (PTAB) resources (by participating in the IPRs) cut against equitable relief. Id. at *24–

26. For the fourth factor—public interest—the district 

court explained that although “‘no public interest [is] 

served by excusing a party’s violation of its previously negotiated contractual undertaking to litigate in a particular 

forum,’ it is yet to be determined whether the IPRs, in fact, 

violate the” Agreement. Id. at *26 (quoting Gen. Protecht 

Grp., Inc. v. Leviton Mfg. Co., 651 F.3d 1355, 1366 

(Fed. Cir. 2011)). It then determined that “[a]t this point” 

the public interest in preventing invalid patents and allowing the PTAB to complete its proceedings weighed against 

an injunction. See id.

DexCom appeals from the district court’s interlocutory 

order. We have jurisdiction under 28 U.S.C. §§ 1292(c)(1), 

1295(a)(1). 

DISCUSSION

We review a denial of a preliminary injunction under 

regional circuit law—here, the law of the Third Circuit. 

Nippon Shinyaku Co. v. Sarepta Therapeutics, Inc., 

25 F.4th 998, 1004 (Fed. Cir. 2022). The Third Circuit reviews such denials for an abuse of discretion and reviews 

underlying legal errors de novo. Id.; Adams v. Freedom 

Forge Corp., 204 F.3d 475, 484 (3d Cir. 2000). “To meet the 

abuse-of-discretion standard, the moving party must show 

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DEXCOM, INC. v. ABBOTT DIABETES CARE, INC. 7

that the district court has made ‘a clear error of judgment

in weighing relevant factors or in basing its decision on an 

error of law or on clearly erroneous factual findings.’” 

Bayer CropScience AG v. Dow AgroSciences LLC, 851 F.3d 

1302, 1306 (Fed. Cir. 2017) (quoting Mentor Graphics Corp. 

v. Quickturn Design Sys., Inc., 150 F.3d 1374, 1377 

(Fed. Cir. 1998)).

The court considers the following four factors in evaluating a motion for a preliminary injunction: “(1) whether 

the moving party has shown a reasonable likelihood of success on the merits; (2) whether the moving party will suffer 

irreparable harm in the absence of a preliminary injunction; (3) whether the balance of hardships tips in the moving party’s favor; and (4) the impact of a preliminary 

injunction on the public interest.” Nippon Shinyaku, 

25 F.4th at 1005. 

The first factor, whether DexCom is likely to succeed 

on the merits of its breach-of-contract counter-counterclaim, requires interpretation of the Agreement. Specifically, we must determine whether the Agreement’s forum 

selection clause bars the filing of IPRs after the Covenant 

Period. Thus, this appeal presents “a question of contract 

interpretation under Delaware law, which we review de 

novo.” Studiengesellschaft Kohle, M.B.H. v. Hercules, Inc., 

105 F.3d 629, 632 (Fed. Cir. 1997); J.A. 356 ¶ K.7 (“This 

Agreement . . . shall be construed, governed, and interpreted in accordance with the laws of the State of Delaware . . . .”). The district court assumed for purposes of the 

motion that this factor weighed in favor of an injunction.2 

2 The district court has since held that Abbott’s IPR 

petitions did not violate the Agreement’s forum selection 

clause, reasoning that IPR petitions could only be filed at 

the PTAB and thus could not be brought in the District of 

Delaware. See ECF No. 21, Ex. 2 (Pretrial Tr. at 88:25–

89:06). 

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8 DEXCOM, INC. v. ABBOTT DIABETES CARE, INC. 

Our review of the Agreement compels us to conclude otherwise.

Under Delaware law, contract interpretation requires 

that the “construction . . . be that which would be understood by an objective, reasonable third party.” Estate of 

Osborn v. Kemp, 991 A.2d 1153, 1159 (Del. 2010). We are 

to read the contract “as a whole” and “give each provision 

and term effect, so as not to render any part of the contract 

mere surplusage.” Id. (quoting Kuhn Const., Inc. v. Diamond State Port Corp., 990 A.2d 393, 396–97 (Del. 2010)). 

Our interpretation “requires all contract provisions to be 

harmonized and given effect where possible.” Martin Marietta Materials, Inc. v. Vulcan Materials Co., 68 A.3d 1208, 

1225 (Del. 2012), as corrected (July 12, 2012).

Under the heading “F. No Challenge Covenants and 

Exceptions Thereto,” the Agreement’s no-challenge covenants state that “[d]uring the Covenant Period,” DexCom 

and Abbott “shall not Challenge” each other’s patents or 

patent applications provided that the parties are complying with the Agreement. J.A. 345 §§ F.1–2. This section of 

the Agreement also contains the following exceptions: 

3. However, each Party reserves its rights and is 

permitted to Challenge any patent or patent application that is being asserted (or threatened to be 

asserted) against it or its products.

4. Further, each Party reserves its rights and is 

permitted to Challenge any of the patents of the 

other Party if there is a statute, regulation, or rule 

that sets a deadline to make the Challenge.

J.A. 346.

Section F.4 also lists nonlimiting examples of Challenges contemplated by the exception, such as post grant 

review or interference proceedings. J.A. 346. As noted supra at 3, the Agreement’s definition of Challenge expressly 

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DEXCOM, INC. v. ABBOTT DIABETES CARE, INC. 9

includes inter partes review of the parties’ patents. 

J.A. 333 § A.7. 

We are to interpret contract terms as an objective, reasonable third party would and, on its face, the forum selection clause applies during the Agreement’s entire term, 

including during the Covenant Period. Under the heading, 

“Choice of Forum,” the forum selection clause states: “The 

United States Federal District Court for the District of Delaware shall have exclusive jurisdiction over any dispute 

arising from or under or relating to this Agreement, to the 

extent permitted by law.” J.A. 353 § J.4. Nothing in the 

forum selection clause or elsewhere in the Agreement suggests an intent to restrict the forum selection clause to the 

period after the Covenant Period.

Although the parties dispute whether the filing of IPRs 

was permissible after the Covenant Period, sections F.3 

and F.4 indisputably allowed IPR filings during the Covenant Period under certain conditions. See Oral Arg. 

at 3:44–3:54 (DexCom admission), 23:40–23:50 (Abbott admission), https://oralarguments.cafc.uscourts.gov/default.aspx?fl=23-1795_09052023.mp3. It necessarily 

follows that because the forum selection clause governs 

both during and after the Covenant Period, the clause cannot operate to prohibit the filing of IPRs after the Covenant 

Period if it allowed them during the Covenant Period. See

Oral Arg. at 2:22–3:00; see also Martin Marietta, 68 A.3d 

at 1225. We are not persuaded by DexCom’s suggestion 

that the forum selection clause has a different interpretation during the Covenant Period versus after the Covenant 

Period. Nothing in the Agreement supports such an interpretation. We are similarly unpersuaded by DexCom’s argument that the forum selection clause does not apply 

during the Covenant Period because, as noted above, nothing in the Agreement indicates as much.

Given the specific language in the Agreement in this 

case, DexCom’s reliance on our decisions in Texas 

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10 DEXCOM, INC. v. ABBOTT DIABETES CARE, INC. 

Instruments Inc. v. Tessera, Inc., 231 F.3d 1325 (Fed. Cir. 

2000); General Protecht, 651 F.3d at 1355; and Dodocase 

VR, Inc. v. MerchSource, LLC, 767 F. App’x 930 (Fed. Cir. 

2019) (nonprecedential) to support its argument that the 

forum selection clause precludes IPR proceedings is misplaced. Although we held that the specific forum selection 

clauses at issue in those cases prohibited filing a proceeding outside the stipulated forum,3 those cases lacked a key 

3 In Texas Instruments, the district court denied a 

preliminary injunction to prevent the defendant from participating in an International Trade Commission (ITC) infringement action because although the parties’ license 

agreement required that “any litigation . . . relating to this 

Agreement shall take place in California,” Texas Instruments had “not established a likelihood of proving that 

[Tessera’s] action before the ITC is litigation.” 231 F.3d 

at 1327–28. In reversing the district court’s denial, we explained that in the field of patent law, which was relevant 

to the license at issue, “‘litigation’ does not exclude ITC proceedings under section 337.” Id. at 1330.

In General Protecht, the district court granted a preliminary injunction to prevent the defendant from litigating in the Northern District of California or at the ITC. 

651 F.3d at 1358. There, the forum selection clause stated 

that “[a]ny dispute between the Parties relating to or arising out of this [Settlement Agreement] shall be prosecuted 

exclusively in the United States District Court for the District of New Mexico.” Id. We found no abuse of discretion 

in the district court’s grant of the injunction because the 

dispute indisputably “relate[d] to or ar[o]se[] out of” the settlement agreement. Id. at 1359.

In Dodocase, the district court also granted a preliminary injunction to prohibit IPR proceedings, specifically 

finding that “Dodocase was likely to succeed on its claim 

that MerchSource filed the PTAB petitions in violation of 

the forum selection clause of the” license agreement. 

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DEXCOM, INC. v. ABBOTT DIABETES CARE, INC. 11

circumstance present here—that the Agreement allowed 

the filing of IPR petitions under certain circumstances notwithstanding the existence of the forum selection clause. 

We therefore conclude DexCom cannot succeed on its 

breach-of-contract counter-counterclaim. Although the 

district court erred in assuming DexCom proved a likelihood of success, this error was harmless as our conclusion 

that DexCom failed to demonstrate a likelihood of success 

favors the district court’s ultimate denial of the preliminary injunction. See, e.g., Nippon Shinyaku, 25 F.4th 

at 1005 (“[U]nder both Federal Circuit and Third Circuit 

precedent, the first factor—i.e., likelihood of success on the 

merits—is a necessary showing to establish entitlement to 

a preliminary injunction.”). Moreover, because DexCom 

cannot succeed on the merits in its breach-of-contract counter-counterclaim under our legal interpretation of the 

Agreement, it is not entitled a preliminary injunction, and 

we need not address the remaining preliminary injunction 

factors. Reebok Int’l Ltd. v. J. Baker, Inc., 32 F.3d 1552, 

1555–56 (Fed. Cir. 1994) (“A movant seeking a preliminary 

injunction must establish a reasonable likelihood of success 

on the merits . . . .”); see also Nichia Corp. v. Everlight 

Ams., Inc., 855 F.3d 1328, 1344 (Fed. Cir. 2017) (“Because 

[the movant] failed to establish one of the four equitable 

factors, the court did not abuse its discretion in denying 

[the movant]’s request for an injunction.”). Accordingly, we 

767 F. App’x at 934. The forum selection clause there required that “disputes shall be litigated before the courts in 

San Francisco County or Orange County, California.” Id.

at 932 (cleaned up). The agreement prohibited the non-movant’s ability to “challenge the validity or enforceability of 

the Licensed IP.” Id. We explained that the district court 

“did not err in concluding that” the forum selection clause 

“encompassed PTAB proceedings.” Id. at 935.

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12 DEXCOM, INC. v. ABBOTT DIABETES CARE, INC. 

affirm the district court’s denial of a preliminary injunction.

CONCLUSION

The district court did not abuse its discretion in denying the motion for a preliminary injunction. We therefore 

affirm.

AFFIRMED

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